Lans v. Adduci, Mastriani & Schaumberg, LLP.

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLUMBIA

____________________________________

)

HÅKAN LANS and )

UNIBOARD AKTIEBOLAG, )

)

Plaintiffs, )

)

v. ) Civil Action No. 02-2165 (RBW)

)

ADDUCI MASTRIANI & )

SCHAUMBERG L.L.P., et al. , )

)

Defendants. )

____________________________________)

MEMORANDUM OPINION

Dr. Håkan Lans and Uniboard Aktiebolag (“Uniboard”), the plaintiffs in this civil suit,

seek to recover “actual and treble” compensatory and punitive damages from the defendants in

an amount to be determined at a trial, as well as injunctive relief in the form of the imposition of

a constructive trust, Third Amended Complaint (the “Compl.”) at 56-57, due to (1) multiple

alleged breaches by the defendants of their duty of care and fiduciary duty in regard to legal

representation provided to the plaintiffs in various matters, see id. ¶¶ 11-12 (listing four discrete

breaches of the duty of care by the defendants and nineteen discrete breaches of their fiduciary

duty by the defendants); (2) perjury committed as “part of a pattern of conduct designed

corruptly to influence a judge of a United States [District] Court[] and obstruct or impede the due

administration of justice,” id. ¶ 6; (3) conversion of “funds received in trust for [the p]laintiffs,”

id. ¶ 8; and (4) “racketeering activity . . . designed . . . to avoid the consequences of [the

d]efendants’ negligence,” id. ¶ 9. The plaintiffs contend that these misdeeds resulted in the loss

of the plaintiffs’ proprietary interests in a patent allegedly worth “more than $100 million.” Id.

¶ 13. Currently before the Court are separate dispositive motions: a motion to dismiss for lack of

personal jurisdiction and forum non conveniens filed by defendants Delphi & Co. (“Delphi”),

Peter Utterström, and Talbot Lindström (collectively the “Delphi Defendants”), and a motion for

partial judgment on the pleadings filed by defendants Adduci, Mastriani & Schaumberg, L.L.P.

(“AMS”), Louis Mastriani, Tom Schaumberg, and V. James Adduci (collectively the “AMS

Defendants”). Upon carefully considering the plaintiffs’ Third Amended Complaint, the

defendants’ motions, and all memoranda and exhibits submitted with these filings, 1 the Court

concludes for the reasons that follow that it must deny the Delphi Defendants’ motion and grant

in part the AMS Defendants’ motion.

I. Background 2

Although the facts giving rise to this litigation are relatively straightforward, the

procedural history of this case is a long and tortured one. In the mid-1970s, Dr. Lans, “one of

the most well[-]regarded scientists in Sweden,” Compl. ¶ 15, “began working on the

development of a color graphics system for computers and data processing and display systems,”

id. ¶ 24. This work resulted in the invention of “a system and apparatus for managing the picture

memory of a digital color graphics imaging system,” id. (internal quotation marks omitted),

1

In addition to the plaintiffs’ Third Amended Complaint, the Delphi Defendants’ motion to dismiss, and the AMS

Defendants’ motion for partial judgment on the pleadings (the “AMS Defs.’ Mot.”), the Court considered the

following documents in reaching its decision: (1) the Memorandum of Law in Support of Motion to Dismiss Claims

Against the Delphi Defendants for Lack of Personal Jurisdiction and on the Ground of Forum Non Conveniens (the

“Delphi Defs.’ Mem.”); (2) the Plaintiffs’ Memorandum of Points and Authorities in Opposition to the Delphi

Defendants’ Motion to Dismiss the Plaintiffs’ Third Amended Complaint (the “Pls.’ Delphi Opp’n”); (3) the Reply

Memorandum in Support of Motion to Dismiss Claims Against the Delphi Defendants for Lack of Personal

Jurisdiction and on the Ground of Forum Non Conveniens (the “Delphi Defs.’ Reply”); (4) the Memorandum of

Points and Authorities in Support of the AMS Defendants’ Motion for Judgment on the Pleadings (the “AMS Defs.’

Mem.”); (5) the Memorandum of Law in Opposition to the AMS Defendants’ Motion for Judgment on the Pleadings

(the “Pls.’ AMS Opp’n”); and (6) the AMS Defendants’ Reply to Plaintiffs’ Opposition to Motion for Judgment on

the Pleadings (the “AMS Defs.’ Reply”).

2

All of the facts discussed herein are either alleged in the plaintiffs’ Third Amended Complaint or are matters of

public record.

2

which Dr. Lans patented in the United States, Germany, Denmark, Finland, Italy, Japan, and

Norway, id. ¶¶ 24-25. This patent, U.S. Patent No. 4,303,986 (the “‘986 Patent”), was registered

in the United States on December 1, 1981, and expired on January 9, 1999. Id. ¶ 26.

“Since at least 1985, Dr. Lans has been the [m]anaging [d]irector and sole shareholder of

Uniboard,” a “Swedish corporation with its principal place of business” in Salsjöbaden, Sweden.

Id. ¶ 16. “On October 19, 1989, . . . Dr. Lans assigned [his] rights in the ‘986 Patent to

Uniboard.” Id. ¶ 30. That same day, “Uniboard entered into a non-exclusive agreement to

license the ‘986 Patent to IBM.” Id. Dr. Lans also “signed a document . . . that clarified his

retention of the ownership of the ‘986 Patent while transferring the licensing rights under the

‘986 Patent to Uniboard.” Id. ¶ 31.

Six years later, Peter Utterström, the managing partner of Swedish law firm Delphi, id.

¶¶ 21-22, “approached Dr. Lans about enforcing the ‘986 Patent and convinced Dr. Lans to meet

with him and Lindstr[ö]m,” id. ¶ 32, a District of Columbia attorney affiliated with Delphi as “of

counsel,” id. ¶ 23, to discuss the project, id. ¶ 32. Lindström, in turn, contacted AMS, id. ¶ 33,

“a District of Columbia law firm . . . claim[ing] to have extensive experience in patent matters,”

id. ¶ 17, “after which Lindstr[ö]m and Utterstr[ö]m of Delphi and Mastriani and Schaumberg[,

principals] of AMS[,] began to correspond about the possibility of pursuing patent infringers of

the ‘986 Patent,” id. ¶¶ 18-19, 33. “As part of their review of the ‘986 Patent in 1995, Delphi,

Lindstr[ö]m[,] and Utterstr[ö]m determined that IBM had entered into a non-exclusive license

agreement to use the ‘986 Patent,” a fact they shared with AMS. Id. ¶ 34.

Mastriani wrote Dr. Lans directly in March of 1996, urging Dr. Lans to “pursu[e]

infringers of the ‘986 Patent,” and suggesting that “litigation could be brought in the name of a

company to which Dr. Lans could assign the ‘986 Patent.” Id. ¶ 35. “On May 9, 1996, Mastriani

3

faxed Lindstr[ö]m a request that he set up a meeting with Dr. Lans on May 17, 1996[,] in

Stockholm,” and “faxed a proposal to Dr. Lans requesting that Delphi and AMS represent him in

connection with pursuing infringers of the ‘986 Patent.” Id. ¶ 36. Twelve days after this May 17

meeting with Dr. Lans, Shaumberg, Utterström, and Lindström, id. ¶ 38, “Mastriani sent a

proposal to Dr. Lans for notifying and suing infringers of the ‘986 Patent,” id. ¶ 39. In that

proposal, “Mastriani acknowledged that the ‘986 Patent would expire in December [of] 1998,”

although the actual expiration date was January 9, 1999. Id.

On or about August 9, 1996, Dr. Lans entered into a fee agreement with AMS and Delphi

(the “Fee Agreement”). Id. ¶ 45. “Under the [terms of] the Fee Agreement, Dr. Lans was to

receive 67% of all recoveries from infringers of the ‘986 Patent, and the attorneys were to

receive 33%, to be divided as they chose.” Id. ¶ 41. “The Fee Agreement gave AMS and Delphi

the right of access to all licensing and litigation concerning the ‘986 Patent . . . anywhere in the

world,” id. ¶ 42, and also vested AMS and Delphi with “complete discretion in the conduct of

negotiations concerning licensing strategy,” id. ¶ 43. Further, the Fee Agreement vested AMS

with “exclusive discretion in the conduct of litigation.” Id. ¶ 44.

“From September [of] 1996 through March [of] 1997, AMS sent approximately 100

letters giving notice of the ‘986 Patent to potential infringers . . . .” Id. ¶ 49. All of these notices

were sent in Dr. Lans’s name. Id. Mastriani, Adduci (a principal of AMS), and Schaumberg

also met with Utterström and Lindström in July of 1997 at AMS’s office in Washington, D.C., to

discuss, inter alia, whether suits for infringement of the ‘986 Patent “should be brought in Dr.

Lans’[s] name or in the name of . . . Uniboard.” Id. ¶¶ 20, 60. Ultimately, the defendants

“decided that the lawsuit[s] should be filed in Dr. Lans’[s] name only.” Id. ¶ 60.

On October 24, 1997, AMS filed separate patent infringement suits in this Court—all in

4

the name of Dr. Lans—against Digital Equipment Corporation (“Digital Equipment”), Gateway

2000, Inc. (“Gateway”), Hewlett-Packard Company (“Hewlett-Packard”), Packard Bell NEC,

Inc. (“Packard Bell”), Dell Computer Corporation (“Dell”), Compaq Computer Corporation

(“Compaq”), Acer America Corporation (“Acer”), and AST Research, Inc. (collectively the

“Computer Companies”). See generally Lans v. Digital Equip. Corp., Civil Action No. 97-2493

(JGP) (D.D.C.); Lans v. Gateway 2000, Inc., Civil Action No. 97-2523 (RBW) (D.D.C.); Lans v.

Hewlett-Packard Co., Civil Action No. 97-2524 (JGP) (D.D.C.); Lans v. Packard Bell NEC, Inc.,

Civil Action No. 97-2525 (JGP) (D.D.C.); Lans v. Dell Computer Corp., Civil Action No. 97-

2526 (RBW) (D.D.C.); Lans v. Compaq Computer Corp., Civil Action No. 97-2527 (JGP)

(D.D.C.); Lans v. Acer Am. Corp., Civil Action No. 97-2528 (JGP) (D.D.C.); Lans v. AST

Research, Inc., Civil Action No. 97-2529 (JGP) (D.D.C.). 3 These civil actions (collectively the

“Lans Civil Actions”) were assigned to Judge Penn of this Court until his passing in October of

2007.

As part of the discovery process in the Lans Civil Actions, “Gateway asked IBM for a

copy of the document under which Uniboard claimed the right to assign rights in the ‘986 Patent

to IBM.” Compl. ¶ 90. After receiving a copy of this document, Gateway filed a motion to

dismiss Dr. Lans’s complaint or, in the alternative, for summary judgment “based upon a lack of

standing and attached the assignment from [Dr.] Lans to Uniboard in support of its motion.” Id.

¶ 91. Thereafter, the other Computer Companies filed motions to dismiss for the same reason.

See id. ¶ 96. AMS responded on Dr. Lans’s behalf by filing both oppositions to these motions

and motions for leave to file amended complaints substituting Uniboard as the plaintiff in each of

3

AMS also filed patent infringement actions in Dr. Lans’s name against Olsy North America, Inc. and Siemens

Nixdorf Information Systems, Inc., but the complaints in those cases were dismissed pursuant to settlement

agreements entered into by the parties. See generally Lans v. Olsy N. Am., Inc., Civil Action No. 97-2530 (JGP)

(D.D.C.); Lans v. Siemens Nixdorf Info. Sys., Inc., Civil Action No. 98-50 (JGP) (D.D.C.).

5

the Lans Civil Actions.

On November 23, 1999, Judge Penn issued a memorandum opinion granting Gateway’s

motion for summary judgment and denying Dr. Lans’s motion seeking leave to file an amended

complaint. Lans v. Gateway 2000, Inc., 84 F. Supp. 2d 112, 123 (D.D.C. 1999) (“Lans I”). 4

Judge Penn described the factual background of the case before him as follows:

Prior to filing his motion for leave to amend by substituting

plaintiffs, [Dr.] Lans had denied that the ‘986 [P]atent had ever

been assigned. [Dr.] Lans’s original complaint made no mention

of Uniboard or any assignment. During discovery, [Dr.] Lans

appeared to resist disclosing any information that would cast doubt

on his status as patentee. For example, in response to an

interrogatory filed in a related case, [Dr.] Lans declared that there

has been no assignment of the ‘986 [P]atent. Furthermore, that

same interrogatory response indicates that [Dr.] Lans was the party

licensing the patent to IBM, when in fact Uniboard was the

licensor in the transaction.

Apparently, even when confronted with [the] defendant’s

repeated discovery requests surrounding any assignment, [Dr.]

Lans neglected to inform even his attorneys that an assignment had

taken place. Finally, after being confronted by [the] defendant

with a copy of the assignment, [Dr.] Lans recalled that he had

signed the document approximately ten years ago in the context of

granting a license to IBM under the [‘986 Patent]. As such, [Dr.]

Lans now understands that the patent is owned by his wholly-

owned company, Uniboard.

Id. at 114 (internal quotation marks, citations, and footnotes omitted).

Based on these factual findings, Judge Penn concluded that Dr. Lans’s motion for leave

to file an amended complaint was without merit because the Court lacked subject-matter

jurisdiction to permit Dr. Lans, who did not own the ‘986 Patent, to file an amended complaint,

id. at 115-17, and because Dr. Lans’s failure to name Uniboard as the plaintiff in the case was

not the type of “honest and understandable mistake” necessary to permit substitution of a

4

Judge Penn also denied as moot Gateway’s motion to dismiss, and dismissed the complaint with prejudice. Lans

v. Gateway 2000, Inc., Civil Action No. 97-2523, Order (D.D.C. Nov. 23, 1999).

6

plaintiff under Federal Rule of Civil Procedure 17(a), id. at 117-22. Judge Penn explained this

latter conclusion at length:

[Dr.] Lans argues simultaneously that he both forgot that he had

made the assignment and that he thought the assignment was

invalid—the Court finds this dual position untenable. [Dr.] Lans

was in control of all the information regarding the assignment

since it was executed. As previously noted, [Dr.] Lans was able to

inform his attorneys of the license to IBM, but then appears to

have conveniently forgotten the assignment to Uniboard, which

was a vital aspect of that transaction. Prior to the declaration in

support of his motion to amend, [Dr.] Lans never expressed any

doubts as to the assignment’s validity. In any event, it was entirely

within [Dr.] Lans’s ability to verify the validity of the assignment,

establish ownership of the patent, and sue in the name of the

proper plaintiff. When [Dr.] Lans’s attorneys inquired as to

whether he had made any assignments of the patent, [Dr.] Lans

should have told them about the assignment to IBM and his belief

that the assignment was invalid. If he had done that, counsel might

have proceeded differently[] and avoided this present situation.

The Court cannot escape the conclusion that [Dr.] Lans chose to

conceal all information about the assignment, possibly even from

his attorneys, until confronted with irrefutable evidence that the

assignment had occurred.

Id. at 122. Judge Penn went on to grant Gateway’s motion for summary judgment and dismiss

Lans v. Gateway 2000, Inc., Civil Action No. 97-2523, because it was “clear that [Dr.] Lans, in

his individual capacity, lack[ed] the requisite standing to bring this claim against [the]

defendant.” Id. at 123. He subsequently issued memoranda opinions in the other Lans Civil

Actions incorporating his decision in Lans I.

Despite this setback, AMS continued to represent Dr. Lans in all of the Lans Civil

Actions. 5 And, on December 22, 1999, AMS filed a notice of appeal in the United States Court

5

Dr. Lans alleges that “there is no record that the AMS Defendants ever sent [him] a copy of [Judge Penn’s]

opinion dismissing the [civil action against Gateway].” Compl. ¶ 96. Circuitous statements of this nature do not

qualify as the kind of “plain statement of the claim” envisioned by Federal Rule of Civil Procedure 8(a)(2). If Dr.

Lans believes in good faith that the AMS Defendants never sent him a copy of Judge Penn’s Lans I decision, he

should say so without equivocation, rather than making an insinuation to that effect.

7

of Appeals for the Federal Circuit on behalf of Dr. Lans challenging Judge Penn’s orders of

dismissal. See Lans v. Gateway 2000, Inc., 110 F. Supp. 2d 1, 3 (D.D.C. 2000) (“Lans II”). A

little over a month later, on January 24, 2000, AMS filed motions for reconsideration of those

same orders with Judge Penn pursuant to Federal Rule of Civil Procedure 60(b)(2), alleging that

newly discovered evidence had been located by Dr. Lans. Id. Judge Penn denied those motions

in memoranda opinions and orders issued on April 13, 2000, see, e.g., id. at 4-10 (holding that

the “evidence” produced by Dr. Lans did not qualify as newly discovered evidence within the

meaning of Rule 60(b)(2)), which Dr. Lans, through AMS, appealed.

AMS also initiated a separate patent infringement suit on behalf of Uniboard against all

of the Computer Companies. See generally Uniboard Aktiebolag v. Acer Am. Corp., Civil

Action No. 99-3153 (RBW) (D.D.C.). The Computer Companies promptly moved to either

dismiss Uniboard’s complaint or, in the alternative, for summary judgment on the ground that

Uniboard failed to notify infringers of its patent or their infringement in the manner prescribed

by 35 U.S.C. § 287(a) until it filed its complaint in November of 1999. 6 Uniboard Aktiebolag v.

Acer Am. Corp., 118 F. Supp. 2d 19, 22 (D.D.C. 2000). As the ‘986 Patent had expired on

January 9, 1999, the Computer Companies argued that the notice they received came eleven

months too late to give rise to any measurable period of damages. Id.

In a memorandum opinion issued on August 31, 2000, Judge Penn, who presided over the

6

35 U.S.C. § 287(a) provides, in relevant part:

Patentees . . . may give notice to the public that the same is patented, either by

fixing thereon the word “patent” or . . . by fixing to it . . . a label containing a

like notice. In the event of failure so to mark, no damages shall be recovered by

the patentee in any action for infringement, except on proof that the infringer

was notified of the infringement and continued to infringe thereafter, in which

event damages may be recovered only for infringement occurring after such

notice. Filing of an action for infringement shall constitute such notice.

35 U.S.C. § 287(a) (2006).

8

Uniboard case as well, 7 concluded that “[a]ny knowledge the [Computer Companies] might have

had of the[ir] infringements [of the ‘986 Patent] before Uniboard gave them actual notice [was]

irrelevant” as a matter of law. Id. at 24. He further reasoned that his prior holding in Lans I

compelled him to hold that “[a]ny notice provided by [Dr.] Lans in his personal capacity [was]

not attributable to Uniboard,” id. at 25, and therefore agreed with the Computer Companies that

Uniboard did not provide notice to the defendants of their alleged infringement of the ‘986

Patent in the manner required by § 287(a) until after the ‘986 Patent had expired, id. at 25-27.

Accordingly, he granted the Computer Companies’ motions and dismissed Uniboard’s complaint

with prejudice. Id. at 27. Acting once again on behalf of Dr. Lans, AMS timely appealed this

determination to the Federal Circuit. Lans v. Digital Equip. Corp., 252 F.3d 1320, 1326 (Fed.

Cir. 2001).

The Federal Circuit resolved all three of the appeals filed by AMS on behalf of the

plaintiffs in a decision issued on June 4, 2001. The Federal Circuit “first address[ed] [Judge

Penn’s] dismissal of Uniboard’s complaint,” concluding that Judge Penn had “correctly ruled

that Uniboard ha[d] not stated a claim on which relief may be granted,” id. at 1326, 1328,

because “notice from someone closely associated with the patentee does not satisfy § 287(a),” id.

at 1327, “Uniboard’s licensees did not mark their products,” and “Uniboard did not inform the

Computer Companies of infringement before expiration of the ‘986 [P]atent,” id. at 1328. The

circuit court further concluded that in light of the “unusual circumstances” presented by the case,

id., Judge Penn “remained well within [his] broad discretion in denying [Dr.] Lans’s motion for

leave to amend his complaint,” id. at 1329. Finally, the circuit court held that Judge Penn “did

not abuse [his] discretion in denying [Dr.] Lans relief from judgment under Rule 60(b)(2).” Id.

7

Uniboard was originally assigned to a different member of the Court, but was transferred to Judge Penn due to its

relation to the Lans Civil Actions. See LCvR 40.5(a), (c).

9

While Dr. Lans’s appeals were still pending before the Federal Circuit, the Computer

Companies filed motions for attorneys’ fees against Dr. Lans and Uniboard in their respective

cases. Lans v. Gateway 2000, Inc., Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526

(JGP), Civil Action No. 97-2528 (JGP), Civil Action No. 97-2529 (JGP), Civil Action No. 99-

3153 (JGP), slip op. at 1-2 (D.D.C. Sept. 6, 2001) (“Lans III”). 8 They sought attorneys’ fees

against Dr. Lans and Uniboard directly pursuant to 35 U.S.C. § 285, a patent law provision

providing for attorneys’ fees to a prevailing party where there are “exceptional circumstances,”

id. at 6-7, and against AMS pursuant to 28 U.S.C. § 1927, which provides that “[a]ny

attorney . . . who so multiplies the proceedings in any case unreasonably and vexatiously may be

required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees

reasonably incurred because of such conduct,” id. at 7 (quoting 28 U.S.C. § 1927). Acer also

filed a separate motion for costs pursuant to 28 U.S.C. §§ 1919, 1920, Federal Rules of Civil

Procedure 11 and 54(d), Local Civil Rule 54.1, and based on the Court’s inherent authority. Id.

at 14.

Judge Penn resolved these motions in a consolidated memorandum opinion issued on

September 6, 2001. With respect to Dr. Lans, Judge Penn concluded that he “ha[d] no

alternative but to conclude” that there were “exceptional circumstances” within the meaning of

35 U.S.C. § 285 “[c]onsidering the history of this case[] and the conclusions [that he reached] in

Lans I.” Lans III, slip op. at 11. He further concluded that it was appropriate to award attorneys’

fees with respect to Uniboard under § 285 because its separate suit against the Computer

8

Digital Equipment, Hewlett-Packard, and Packard Bell subsequently withdrew their motions pursuant to

settlement agreements entered into by the parties. See Stipulation, Lans v. Digital Equip. Corp., Civil Action No.

97-2493 (D.D.C. Aug. 2, 2001) (Docket Entry (“Dkt.”) 112); Stipulation, Lans v. Hewlett-Packard Co., Civil Action

No. 97-2524 (D.D.C. July 23, 2001) (Dkt. 101); Stipulation, Lans v. Packard Bell NEC, Inc., Civil Action No. 97-

2525 (D.D.C. July 24, 2001) (Dkt. 86).

10

Companies was frivolous. Id. at 16-18.

Judge Penn also found fault with AMS’s conduct in the Lans Civil Actions and the

Uniboard litigation:

First, the Court is concerned that [AMS] failed to properly

investigate ownership of the patent prior to filing the Lans cases.

Second, the Court is concerned that [AMS] did not adequately

investigate the issue of a potential assignment when the issue was

raised by the defendants. Third, while the Court recognizes that

there were discovery disputes under consideration after the

assignment became known, it took an order from this Court to

force [Dr.] Lans and his counsel to make a clear statement as to the

ownership of the patent. Fourth, [AMS] filed a motion for

reconsideration based on new evidence demonstrating that [Dr.]

Lans owned the patent at the same time it was maintaining a suit

on Uniboard’s behalf. Surely representation of both [Dr.] Lans and

Uniboard, when both were claiming ownership of the ‘986

[P]atent, should have raised ethical considerations for the firm.

...

[AMS] presented this Court with two, mutually exclusive[]

theories as to the true ownership of the ‘986 [P]atent. . . . Given

the Court’s previous holding that only the actual owner could sue

for infringement, [AMS] knew that maintaining both of these

theories of ownership was untenable. The Court agrees with [the

Computer Companies] that once [AMS] put forth the new evidence

in the Lans cases, it was under an obligation to withdraw the

Uniboard case. By maintaining both the Lans motions for

reconsideration and the Uniboard case, [AMS] put [the Computer

Companies] in the situation of having to defend duplicative

litigation.

Id. at 13-14, 19 (internal citation omitted).

Nevertheless, Judge Penn was “unable to conclude that [AMS]’s conduct was vexatious

and unreasonable” within the meaning of 28 U.S.C. § 1927, and therefore refused to impose fees

against AMS based on its conduct in the Lans Civil Actions. Id. at 14. He reached the same

result with respect to AMS’s conduct in the Uniboard case, noting that AMS had filed a motion

to stay the proceedings in the Uniboard case pending the resolution of Dr. Lans’s motions for

11

reconsideration in the Lans Civil Action and that “the theory of attributing [Dr.] Lans’s notice to

Uniboard was [not] so unreasonable as to justify an award of attorneys[’] fees.” Id. at 20.

Finally, Judge Penn denied Acer’s request for all but $377.40 in costs accrued over the course of

its litigation with Dr. Lans and Uniboard. Id. at 14-16.

It was only after this ruling by Judge Penn that Dr. Lans parted ways with AMS, and

even then, it was AMS, not Dr. Lans, who decided to end the relationship. Specifically, “[o]n

September 20, 2001, Mastriani wrote Dr. Lans and told him that he and AMS would refuse to

represent [him] in any . . . appeal from [Judge Penn’s] September 6, 2001, [o]rder . . . , or in any

petition for a writ of certiorari to the United States Supreme Court.” Compl. ¶ 122. Shortly

thereafter, the plaintiffs obtained new counsel and moved for reconsideration of Judge Penn’s

Lans III decision insofar as that decision imposed the payment of attorneys’ fees on Dr. Lans and

Uniboard but not AMS, claiming that “they were not properly represented on the motion for

attorneys[’] fees that were the subject of the September 6, 2001[,] order.” Lans v. Gateway,

2000, Inc., Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526 (JGP), Civil Action No.

99-3153 (JGP), slip op. at 1 (D.D.C. June 23, 2005) (“Lans IV”). 9 This motion prompted AMS

to move to intervene in the Lans Civil Actions and the Uniboard case, id., which, in turn, led the

plaintiffs to file an application to refer Mastriani to the Office of the United States Attorney for

the District of Columbia for alleged perjury, Lans v. Gateway 2000, Inc., Civil Action No. 97-

9

Dr. Lans also moved for sanctions against Mastriani pursuant to Federal Rule of Civil Procedure 11 and filed an

application to refer Mastriani to the United States Attorney for alleged perjury. Motion of Hakan Lans for Sanctions

under Federal Rule of Civil Procedure 11, Gateway, Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526

(JGP), Civil Action No. 99-3153 (JGP) (June 5, 2002); Application for Referral to the United States Attorney,

Gateway, Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526 (JGP), Civil Action No. 99-3153 (JGP) (June

25, 2004). These motions were denied by Judge Penn in orders entered on July 5, 2005, and July 8, 2005,

respectively. Lans v. Gateway 2000, Inc., Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526 (JGP), Civil

Action No. 99-3153 (JGP), Memorandum (“Mem.”) Order (D.D.C. July 5, 2005); Lans v. Gateway 2000, Inc., Civil

Action No. 97-2523 (JGP), Civil Action No. 97-2526 (JGP), Civil Action No. 99-3153 (JGP), Mem. Order (D.D.C.

July 8, 2005) (“Lans V”).

12

2523 (JGP), Civil Action No. 97-2526 (JGP), Civil Action No. 99-3153 (JGP), Memorandum

(“Mem.”) Order at 1-2 (D.D.C. July 8, 2005) (“Lans V”).

The plaintiffs filed their complaint initiating this civil lawsuit on November 5, 2002,

naming only the AMS Defendants as defendants. They amended their complaint twice

thereafter, adding the Delphi Defendants, the 4,303,986 Partners (the “‘986 Partners”), “a

partnership . . . that entered into a fee[-]splitting agreement concerning proceeds of the ‘986

Patent [l]itigation with the AMS Defendants and the Delphi Defendants,” Second Amended

Complaint and Jury Demand ¶ 25, and James Scott, one of the members of the ‘986 Partners, id.

¶ 26, as defendants. The AMS and Delphi Defendants filed motions to dismiss in response to the

second amended complaint in March and August of 2003, respectively, Dkt. 22, 40, while the

plaintiffs stipulated to the dismissal of their claims against the ‘986 Partners and Scott on

December 30, 2003, Dkt. 55. Thereafter, the case remained inactive for the better part of a year

until Judge Penn entered an order on October 13, 2004, staying the case until he could resolve

the plaintiffs’ motions for reconsideration in the Lans Civil Actions and the Uniboard case. Dkt.

56.

Judge Penn issued a consolidated memorandum opinion resolving those motions on June

23, 2005. Citing Dr. “Lans’[s] credibility” as “[t]he main issue” before him, he ultimately

rejected Dr. Lans’s assertions “that AMS knew about the assignment of the [’]986 Patent to

Uniboard” and that “his previous arguments to the Court were not authorized by him.” Lans IV,

slip op. at 6. While Judge Penn was “suspicio[us]” as to “whether AMS acted within the

appropriate standard of care in determining the ownership of the patent claim,” he did not find

that issue to be “determinative as to whether [Dr.] Lans told AMS about the assignment.” Id. at

8. He found more persuasive an admission by Dr. Lans at an evidentiary hearing on the

13

plaintiffs’ motion for reconsideration that “he did not tell AMS that he had signed an agreement

transferring his ownership rights,” as well as the fact that Dr. Lans “would not have authorized

AMS to send infringement letters naming himself as the owner of the [‘986 P]atent” if he

thought that “the suits should have been filed in the name of Uniboard.” Id. Further, Judge Penn

“[found] it unlikely that AMS would have intentionally filed [the complaints in the Lans Civil

Actions] in the wrong name,” id. at 9, and was “troubled by the fact that [Dr.] Lans continued to

claim that he was the registered owner of the patent even after the transfer to Uniboard was

revealed,” id. at 8.

Judge Penn also rejected the plaintiffs’ allegation that “AMS made the decision to file

[the complaint in the Uniboard case] in the name of Uniboard without consulting [Dr.] Lans.”

Id. at 9. Based on a “letter executed by [Dr.] Lans on December 20, 1999,” in which Dr. “Lans

authorized AMS to file an infringement action against the [C]omputer [C]ompanies with

Uniboard as the named plaintiff,” he concluded that it was “clear that [Dr.] Lans was in control

of the litigation and that the representations made to the Court on Uniboard’s behalf were made

with his consent and approval.” Id. Finally, Judge Penn declined to address certain “additional

claims” raised by the plaintiffs in their motions for reconsideration, reasoning that it would be

more appropriate to adjudicate the claims in the plaintiffs’ lawsuit against the AMS and Delphi

Defendants. Id. at 10 n.10. These claims included AMS’s alleged “failure to tell [Dr.] Lans

about the [‘]986 Partnership, failure to exercise the proper standard of care, failure to conduct

proper research, failure to properly explain American patent law, [and] failure to advise [Dr.]

Lans or Uniboard to seek separate counsel on the [Computer Companies’] motions for

attorneys[’] fees.” Id.

Shortly thereafter, Judge Penn entered an order denying the plaintiffs’ application to refer

14

Mastriani to the Office of the United States Attorney for the District of Columbia. Framing the

issue before him as a question of whether Mastriani perjured himself in an affidavit attached to

AMS’s opposition to the plaintiffs’ motion for reconsideration that was denied in Lans IV, Lans

V, Mem. Order at 1-2, Judge Penn found that the plaintiffs did not “proffer[] evidence in their

application that unequivocally prove[d] that the statements in Mastriani’s affidavit [were] false,”

as required to justify a referral to the United States Attorney, id. at 2. He therefore denied the

motion. Id.

Having held on two occasions that the AMS Defendants should not be held liable for the

attorneys’ fees incurred by the Computer Companies, Judge Penn took up the issue yet again in a

consolidated memorandum opinion resolving a renewed attempt by Gateway and Dell to hold

AMS jointly liable for the attorneys’ fees imposed on Dr. Lans and Uniboard. See generally

Lans v. Gateway 2000, Inc., Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526 (JGP),

Civil Action No. 99-3153 (JGP), slip op. (D.D.C. Aug. 10, 2005) (“Lans VI”). Gateway and

Dell asserted that AMS must have known about the assignment of the ‘986 Patent to Uniboard

based on “AMS’[s] representation of Uniboard in a dispute that arose in January [of] 1997

regarding the scope of the licensing agreement between Uniboard and IBM” that ended in a

settlement in which IBM paid $1 million to license the ‘986 Patent, id. at 5-6, which, Gateway

and Dell argued, IBM never would have done “if Uniboard did not have an ownership interest in

the patent,” id. at 6. They further argued that, at a minimum, “there were various red flags

throughout AMS’[s] representation of [Dr.] Lans,” such as a February 19, 1997, fax from Dr.

Lans to Mastriani in which Dr. Lans referenced the assignment to Uniboard, id., an e-mail from

Dr. Lans to AMS in January of 1999 in which Dr. Lans suggested changing a draft interrogatory

response (the same response that would later be cited by Judge Penn in his Lans I decision as

15

evidence of Dr. Lans’s misconduct) to state that Uniboard was the owner of the ‘986 Patent, and

“two licensing agreements that purported to give both [Dr.] Lans and Uniboard ownership of the

[’]986 [P]atent at the same time,” id. at 7.

Once again, Judge Penn refused to hold AMS accountable for the Computer Companies’

attorneys’ fees. While he agreed that “AMS’[s] failure to uncover the 1986 assignment of the

[‘]986 [P]atent may have been negligent,” he found “no indication that AMS engaged in

vexatious and unreasonable conduct sufficient to warrant sanctions under [§] 1927,” and

concluded that AMS could not be sanctioned under the Court’s inherent authority because “there

[was] no evidence of bad faith” on the part of AMS. Id. at 9. He therefore denied the motion.

Id. at 10.

Following his Lans IV decision denying the plaintiffs’ motions for reconsideration, on

July 12, 2005, Judge Penn vacated his order staying the current case. On October 5, 2005, the

plaintiffs filed their Third Amended Complaint. This complaint incorporates and further

develops many of the allegations made by Dr. Lans, Uniboard, and the Computer Companies

throughout their many submissions regarding the issue of attorneys’ fees in the Lans Civil

Actions and the Uniboard case.

For example, the plaintiffs once again allege that AMS was put on notice of the

assignment of the ‘986 Patent when Dr. Lans sent a copy of the IBM licensing agreement to

AMS in response to an inquiry from Mastriani in March of 1996, but supplement this assertion

with the new allegation that the Delphi Defendants knew about IBM’s non-exclusive license

agreement “[a]s early as December 7, 1995.” Compl. ¶ 50. They repeat the allegation made by

Gateway and Dell in their renewed motion to hold AMS jointly liable for attorneys’ fees based

on Dr. Lans having “reminded the AMS Defendants of Uniboard’s interest in the ‘986 Patent” in

16

a fax sent in February of 1997, id. ¶ 53, but go beyond those allegations by asserting that

Mastriani and Utterström recognized Uniboard’s interest in the ‘986 Patent on several occasions

in April of 1997, including in a declaration filed by Mastriani in a separate declaratory action

unrelated to the Lans Civil Actions, id. ¶¶ 54, 57. Indeed, they now allege that “[o]n April 7,

1997, Schaumberg sought permission from Dr. Lans for the AMS Defendants to act on behalf of

Uniboard concerning the issue of the breadth of the IBM licenses.” Id. ¶ 55.

The plaintiffs also allege, as Gateway and Dell did earlier, that Mastriani drafted the

interrogatory answer cited by Judge Penn in Lans I as evidence of Dr. Lans falsely claiming title

to the ‘986 Patent, Compl. ¶ 88, and that Dr. Lans suggested changing the answer to no avail, id.

¶¶ 88-89. But the plaintiffs go further in their Third Amended Complaint, alleging that Dr. Lans

“reminded Mastriani of their discussions about the Uniboard assignment in early 1997” when

Mastriani asked him about the assignment of the ‘986 Patent after Gateway filed its initial

motion to dismiss, id. ¶ 91, and that Mastriani “never sent Dr. Lans” a copy of Mastriani’s

declaration disclaiming knowledge of the assignment of the ‘986 Patent that was referenced by

Judge Penn in Lans I, id. ¶ 92. Moreover, according to the plaintiffs, “[t]he AMS Defendants

failed to inform the Court of their knowledge of the IBM/Uniboard [a]greement and also failed

to tell the Court of their representation of Uniboard in negotiations with IBM about the scope of

the IBM license agreement, despite their obligation to do so.” Id. ¶ 94.

Finally, the plaintiffs renew their allegation, rejected by Judge Penn in Lans IV, that the

“[AMS] Defendants did not tell [them] that they were filing [the Uniboard] lawsuit.” Id. ¶ 103.

According to the plaintiffs, it was “three weeks after the AMS Defendants filed the Uniboard

lawsuit,” on December 17, 1999, that “Mastriani sent Dr. Lans a document asking him to agree

that AMS represented Uniboard for the purpose of litigation.” Id. ¶ 104. The plaintiffs further

17

allege that “[w]hen the AMS Defendants finally did inform [them] of the Uniboard lawsuit,

[the AMS] Defendants did not tell [the p]laintiffs that there was any problem under American

law in Uniboard’s filing of the lawsuit.” Id. ¶ 103.

The plaintiffs also reference instances of alleged negligence in their Third Amended

Complaint that were not discussed by Judge Penn in his various memoranda opinions. For

example, they allege that AMS negligently represented Dr. Lans in a declaratory judgment action

concerning the ‘986 Patent filed by Micron Electronics, Inc. (“Micron”) and Diamond

Multimedia Systems, Inc. (“Diamond”) in the United States District Court for the District of

Idaho. Id. ¶ 80. Specifically, the AMS Defendants allegedly acknowledged in an internal

memorandum that they had no interest in granting a license to Diamond and that Dr. Lans had a

policy of offering licenses only to computer systems manufacturers (such as Micron) and not to

computer component suppliers (such as Diamond), id. ¶ 82, yet “prepared settlement, license,

and non-assertion agreements that gave [both] Micron and Diamond and all of their customers a

broad world-wide[,] fully paid[-]up license and release under the ‘986 Patent and all of its

foreign counterparts,” id. ¶ 83. And according to the plaintiffs, the effect of this settlement

agreement “was to give a release and immunity from suit to all companies that purchased

otherwise infringing components from Micron-Diamond.” Id. ¶ 84.

This was not the only allegedly disadvantageous settlement negotiated by AMS. As told

by the plaintiffs, “Schaumberg faxed a proposed settlement agreement with Gateway to Dr.

Lans” a few days before Judge Penn granted the Computer Companies’ motion for attorneys’

fees, which, “if executed, would have given Gateway rights to all of Dr. Lans[’s] current and

future inventions, whether related to the ‘986 Patent or not.” Id. ¶ 121. When “Dr. Lans

changed the language of the agreement so that only patents relating to his color graphics

18

technology would be licensed, . . . Schaumberg told him that the language could not be changed

and had to be accepted that day.” Id. More importantly, none of the defendants ever informed

Dr. Lans “that [the AMS Defendants] had a conflict of interest in advising him about

settlement.” Id. Ultimately, Dr. Lans declined to sign the agreement as drafted, “insist[ing] that

any settlement be confined to the ‘986 Patent’s technology.” Id.

The plaintiffs’ Third Amended Complaint is replete with allegations of similarly

unethical conduct by the AMS Defendants. For example, after Judge Penn dismissed the

complaints in the Lans Civil Actions and the Computer Companies moved for attorneys’ fees,

the AMS Defendants allegedly “never raised the advi[c]e of counsel defense []or informed Dr.

Lans that it should be raised.” Id. ¶ 111. And after the Federal Circuit affirmed the rulings in

Lans I, Lans II, and Uniboard, Mastriani allegedly “sent an e[-]mail to Dr. Lans stating that AMS

would file a petition for certiorari with the United States Supreme Court only if Dr. Lans paid

AMS an additional up[-]front fee of $250,000.” Id. ¶ 120. Moreover, after refusing to represent

Dr. Lans in any further actions following the imposition of attorneys’ fees against Dr. Lans and

Uniboard pursuant to Judge Penn’s Lans III decision, id. ¶ 122, Mastriani purportedly “sent a

memo to Dr. Lans and the Delphi Defendants stating that AMS would represent Dr. Lans on

appeals for the grant of attorneys[’] fees to Gateway and Dell . . . if Dr. Lans paid another

$279,000” to AMS, id. ¶ 123.

As for the Delphi Defendants, they allegedly “had actual knowledge of the falsity of the

AMS Defendants’ repeated statements that Dr. Lans had concealed the Uniboard assignment

from his lawyers,” id. ¶ 112, “never advised [the p]laintiffs or the Court of the AMS Defendants’

false testimony” in response to Gateway’s initial motion to dismiss, id ¶ 113, and “never advised

[the p]laintiffs or the Court that [AMS] decided to file the Uniboard complaint without

19

[the p]laintiffs’ consent,” id. ¶ 114. Thus, they allegedly “jointly perpetuated the Court’s false

belief that Dr. Lans had withheld from his lawyers both the fact of the assignment to Uniboard

and the details of the IBM license,” id. ¶ 113, as well as “the Court’s false belief that Uniboard

was responsible for filing its complaint,” id. ¶ 114. Because “[t]he Delphi Defendants had an

obligation to act on behalf [of the p]laintiffs to assure that [the p]laintiffs continued to receive

representation under the terms of the Fee Agreement, but failed to do so,” id. ¶ 125, their alleged

inactivity made them, in the plaintiffs’ view, “complicit[] with the AMS Defendants

in . . . abandoning and harming [the plaintiffs],” id. ¶ 112.

Also, the plaintiffs now allege that all of the defendants have converted licensing

proceeds from the ‘986 Patent. Allegedly, “Dr. Lans entered into an [e]scrow [a]greement with

the AMS Defendants and the Delphi Defendants” on September 23, 1997 (the “Escrow

Agreement”), which “provided that Dr. Lans and the AMS Defendants and the Delphi

Defendants would loan the [‘986 Patent licensing fee] project their respective shares of the sum

[of $390,000].” Id. ¶ 126. This amount was to be repaid to Dr. Lans and the defendants “with

priority before any other payments” arising from the recovered licensing fees would be made.

Id.

“The Escrow Agreement also required the AMS Defendants to make continuous progress

reports on the use of funds for actions in Germany and Italy.” Id. However, according to the

plaintiffs, “[t]he AMS Defendants did not make continuous progress reports to Dr. Lans and did

not repay the amount loaned by Dr. Lans under the Escrow Agreement.” Id. ¶ 127. Moreover,

“[f]rom March 19, 1997, through March 2, 2001, the AMS Defendants and the Delphi

Defendants received a total of $20.93 million in licensing fees and interest from other infringers

of the ‘986 Patent,” yet only turned over $12.33 million to the plaintiffs when “the Fee

20

Agreement required the AMS Defendants and the Delphi Defendants to pay [the p]laintiffs 67%”

of the recovered licensing fees, “or $14.02 million.” Id. ¶ 130. The plaintiffs allege that they

have made repeated requests for payment of the money owed them under the Fee Agreement, id.

¶ 132, as well as an explanation for the disposition of the funds held in trust by their attorneys,

“but the AMS Defendants have repeatedly refused to do so,” id. ¶ 133. Meanwhile, the Delphi

Defendants allegedly “have done nothing to require the AMS Defendants to pay [the p]laintiffs,”

id. ¶ 132, and, “as signators of the Fee Agreement” are therefore “jointly responsible for the

conversion of [the p]laintiffs’ funds,” id. ¶ 134.

Finally, the plaintiffs allege that the AMS Defendants have repeatedly refused to respond

to requests made by the plaintiffs concerning the escrow account established pursuant to the

Escrow Agreement as well as requests regarding litigation undertaken by AMS on Dr. Lans’s

behalf. They identify eighteen separate queries made regarding the escrow account to which the

AMS Defendants have not responded. Id. ¶¶ 135-36. Further, they allege that AMS “failed to

provide information” regarding litigation “to pursue the German counterpart of the ‘986 Patent in

the German courts” by German counsel under AMS’s supervision, id. ¶ 137, as well as

information regarding litigation “to pursue the Italian counterpart of the ‘986 Patent in the Italian

courts” by Italian counsel under the supervision of both AMS and Delphi, id. ¶ 139. AMS has

also allegedly refused to turn over documents requested by the plaintiffs concerning “the [n]on-

[a]ssertion [a]greement between [Dr.] Lans and Diamond . . . negotiated by AMS,” id. ¶ 138, as

well as all of the “notice of infringement letters” sent on Dr. Lans’s behalf in September of 1996,

id. ¶ 139.

Based on these factual allegations, the plaintiffs seek relief under a variety of legal

theories: the Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. §§ 1961-68 (2000)

21

(“RICO”) with respect to both plaintiffs (Count I), 10 id. ¶¶ 143-50, breach of contract with

respect to Dr. Lans (Count II), id. ¶¶ 151-154, and separately with respect to Uniboard (Count

IV), id. ¶¶ 159-62, breach of the implied covenant of good faith and fair dealing with respect to

Dr. Lans (Count III), id. ¶¶ 155-58, and separately with respect to Uniboard (Count V), id.

¶¶ 163-66, breach of fiduciary duty with respect to both plaintiffs (Count VI), id. ¶¶ 167-72,

malpractice with respect to both plaintiffs (Count VII), id. ¶¶ 173-78, fraud with respect to Dr.

Lans (Count VIII), id. ¶¶ 179-89, fraudulent concealment with respect to Dr. Lans (Count IX),

id. ¶¶ 190-98, and separately with respect to Uniboard (Count X), id. ¶¶ 199-207, conversion

with respect to Dr. Lans (Count XI), id. ¶¶ 208-16, and intentional infliction of emotional

distress with respect to Dr. Lans (Count XIV), id. ¶¶ 222-24. The plaintiffs also seek an

accounting on behalf of Dr. Lans “for all funds received in connection with the ‘986 Patent

[l]itigation” (Count XII). Id. ¶ 218. Finally, the plaintiffs seek a determination that any funds

held by the defendants “in connection with the ‘986 Patent [l]itigation” along with “the interest

and proceeds obtained on the use of the funds they wrongfully received” be held “in constructive

trust” for the benefit of Dr. Lans (Count XIII). Id. ¶ 221.

The AMS Defendants answered the plaintiffs’ complaint on October 21, 2005. Ten days

later, they filed a motion for judgment on the pleadings with respect to all of the claims against

them, while the Delphi Defendants renewed their motion to dismiss the plaintiffs’ claims against

them for lack of personal jurisdiction and on the ground of forum non conveniens. Thereafter,

the parties proceeded to conduct discovery notwithstanding their pending motions to dismiss,

10

The plaintiffs refer to this count of their Third Amended Complaint as the “first cause of action,” and refer to

subsequent counts of the Third Amended Complaint in the identical manner. They also mislabel what should in

chronological order correctly be the eleventh count of their Third Amended Complaint as the “twelfth cause of

action” and likewise mislabel by one the remaining counts of the Third Amended Complaint. For the sake of clarity,

the Court has correctly relabeled the counts and will refer to them as correctly relabeled in this memorandum

opinion.

22

which, in turn, gave rise to a series of discovery-related motions. Several of these motions were

stayed pursuant to a minute order entered by Judge Penn on July 25, 2006.

The case was transferred to the undersigned member of the Court on October 2, 2007.

Thereafter, the Court, noting the long passage of time since the filing of the defendants’

dispositive motions, denied all of the pending motions in the case without prejudice and directed

the defendants to renew their dispositive motions on or before February 25, 2008. Both sets of

defendants renewed their motions on that date; however, the AMS Defendants now seek to

dismiss only Counts I through X of the plaintiffs’ Third Amended Complaint. AMS Defs.’ Mot.

at 1. 11

In support of their renewed motion to dismiss, the Delphi Defendants assert that because

they have not had minimum contacts with the District of Columbia and because it would be

unreasonable to assert jurisdiction over them, the Court lacks personal jurisdiction over them as a

constitutional matter. Delphi Defs.’ Mem. at 2, 8-20. They further assert that “Sweden offers

the more convenient forum for the resolution of [the p]laintiffs’ claims against the Delphi

Defendants,” id. at 20, based on the adequacy of Sweden as an alternative forum, id. at 20-21,

and the balancing of private and public interests delineated most extensively by the Supreme

Court in Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981), id. at 22-27. The plaintiffs dispute

the Delphi Defendants’ assertion that they lacked minimum contacts in the District of Columbia,

Pls.’ Delphi Opp’n at 7-13, arguing that the contacts at issue in this litigation were purposely

directed at the District of Columbia, id. at 14-15, that the plaintiffs’ claims arise out of these

11

Previously, the AMS Defendants argued that upon dismissal of Counts I through X of the plaintiffs’ Third

Amended Complaint, the Court should dismiss the remaining counts in the complaint for lack of subject-matter

jurisdiction. They take the opposite position in their renewed motion. See AMS Defs.’ Mem. at 7 n.2

(acknowledging that “two recent decisions by the [Federal Circuit] . . . conclusively establish that irrespective of the

Court’s decision on the [AMS Defendants’ motion], federal subject[-]matter jurisdiction is maintained for the

remainder of [the p]laintiffs’ claims”).

23

contacts, id. at 15, and that it is reasonable to assert personal jurisdiction over the Delphi

Defendants, id. at 16-19. Alternatively, they opine in a footnote that they should be permitted to

take jurisdictional discovery of the Delphi Defendants if the Court is inclined to dismiss their

complaint for lack of personal jurisdiction, id. at 2 n.1. With respect to the Delphi Defendants’

forum non conveniens argument, the plaintiffs contend that the Delphi Defendants have

“failed . . . to show that Sweden is an adequate alternative forum,” id. at 20, and that the factors

referenced by the Supreme Court in Piper favor adjudication of their claims in the District of

Columbia, id. at 21-25. The Delphi Defendants contest all of these assertions in their reply

memorandum, Delphi Defs.’ Reply at 1-20, and argue that the plaintiffs are not entitled to

jurisdictional discovery based on the District of Columbia Circuit’s ruling in El-Fadl v. Central

Bank of Jordan, 75 F.3d 668 (D.C. Cir. 1996), id. at 20.

The AMS Defendants assert a variety of arguments in support of their separate motion for

partial judgment on the pleadings. As a threshold matter, they argue that all of the claims at

issue in their motions—Counts I through X of the plaintiffs’ Third Amended Complaint—are

barred by the doctrines of claim preclusion (also known as res judicata) and issue preclusion

(also known as collateral estoppel). AMS Defs.’ Mem. at 16-30. Alternatively, they argue that

the plaintiffs do not allege facts in their Third Amended Complaint sufficient to state causes of

action for violations of RICO (Count I), id. at 5-12, fraud (Count VIII), id. at 14-15, or

fraudulent concealment (Counts IX-X), id. at 15-16. Finally, they argue that “the District of

Columbia does not recognize an independent cause of action for a purported breach of an

implied covenant of good faith and fair dealing with regard to an attorney’s representation of a

client” (Counts III & V). Id. at 12.

The plaintiffs dispute most, but not all, of these arguments. They contend that the criteria

24

for application of the doctrines of claim and issue preclusion have not been satisfied in this case,

Pls.’ AMS Opp’n at 2, 6-13, that to the extent these arguments turn upon the notion that the

plaintiffs were contributorily negligent, they must be rejected because the AMS Defendants

“cannot cite a single case finding a duty from a client to his or her attorney, let alone prove what

that duty entails,” id. at 24, and that, with respect to the plaintiffs’ fraud and fraudulent

concealment claims, “[i]ssue preclusion . . . does not apply to this case because . . . Dr. Lans and

Uniboard have not been able to take discovery from [the AMS Defendants],” id. at 27. They also

argue at length that they have alleged facts sufficient to state a valid RICO claim. Id. at 14-24.

Finally, the plaintiffs assert that “[t]he District of Columbia recognizes causes of action for

breach of contract, breach of fiduciary duty, and breach of [the] implied covenant of good faith

and fair dealing,” id. at 25-26, and further argue that these claims are based on different facts

than the plaintiffs’ malpractice claim, id. at 26-27. They do not respond to the AMS Defendants’

arguments concerning the sufficiency of their allegations in support of their fraud and fraudulent

concealment claims. See id. at 27-29 (arguing only that the plaintiffs’ fraud and fraudulent

concealment claims are not barred by the doctrine of issue preclusion).

In their reply memorandum, the AMS defendants repeat and further develop the

arguments raised in their initial memorandum of law in support of their motion. See AMS Defs.’

Reply at 2-8 (arguing that the plaintiffs do not allege facts sufficient to give rise to a RICO

claim), id. at 8-14 (arguing that many of the plaintiffs’ claims must be dismissed under the

doctrines of claim and issue preclusion); id. at 18 (arguing “that the District of Columbia does

not recognize an independent cause of action for a breach of the implied covenant of good faith

and fair dealing”). They also take issue with the plaintiffs’ assertion that a client cannot be held

to be contributorily negligent in regard to a legal malpractice claim. See id. at 14-18 (“It is

25

clear . . . that the majority of jurisdictions that have considered this issue have either directly or

implicitly held that the defense of contributory negligence is available in an action for legal

malpractice.”). Finally, the AMS Defendants note that the plaintiffs failed to respond to all of

their arguments regarding the plaintiffs’ fraud and fraudulent concealment claims, which the

AMS Defendants construe as “a concession of [the unopposed] argument[s’] validity.” Id. at 19.

II. Standards of Review

As noted previously, the Delphi Defendants seek the dismissal of all claims against them

pursuant to Federal Rule of Civil Procedure 12(b)(2) and the doctrine of forum non conveniens,

while the AMS Defendants seek partial judgment on the pleadings pursuant to Federal Rule of

Civil Procedure 12(c). Each putative basis for dismissal asserted by the parties is governed by

different standards of review. Those standards of review are discussed below.

A. Motion to Dismiss for Lack of Personal Jurisdiction under Rule 12(b)(2)

When personal jurisdiction is challenged under Federal Rule of Civil Procedure 12(b)(2),

the “[p]laintiff bears the burden of establishing personal jurisdiction over each individual

defendant.” Atlantigas Corp. v. Nisource, Inc., 290 F. Supp. 2d 34, 42 (D.D.C. 2003). In the

absence of an evidentiary hearing, the plaintiff need only make a prima facie showing that the

Court has personal jurisdiction. See Mwani v. Bin Laden, 417 F.3d 1, 6 (D.C. Cir. 2005);

Walton v. Bureau of Prisons, 533 F. Supp. 2d 107, 112 (D.D.C. 2008). In order to meet this

burden, the “[p]laintiff must allege specific facts on which personal jurisdiction can be based;

[the plaintiff] cannot rely on conclusory allegations.” Moore v. Motz, 437 F. Supp. 2d 88, 91

(D.D.C. 2006) (internal citations omitted). Furthermore, the “plaintiff cannot aggregate factual

allegations concerning multiple defendants in order to demonstrate personal jurisdiction over any

individual defendant.” Atlantigas, 290 F. Supp. 2d at 42. The Court “may receive and weigh

26

affidavits and other relevant matter to assist it in determining the jurisdictional facts.” United

States v. Philip Morris Inc., 116 F. Supp. 2d 116, 120 n.4 (D.D.C. 2000) (internal quotation

marks and citation omitted); see also Capital Bank Int’l, Ltd. v. Citigroup, Inc., 276 F. Supp. 2d

72, 74 (D.D.C. 2003). However, the Court must resolve all “factual discrepancies appearing in

the record . . . in favor of the plaintiff,” Crane v. N.Y. Zoological Soc’y, 894 F.2d 454, 456 (D.C.

Cir. 1990), and the plaintiff's factual assertions “are presumed to be true unless directly

contradicted by affidavit . . . or other evidence,” Rong v. Liaoning Provincial Gov’t, 362 F.

Supp. 2d 83, 90 (D.D.C. 2005) (internal quotation marks and citation omitted).

B. Motion to Dismiss on the Ground of Forum Non Conveniens

There is a strong presumption in favor of a plaintiff’s choice of forum. Gulf Oil Corp. v.

Gilbert, 330 U.S. 501, 508 (1947). However, the trial court may, in the exercise of discretion,

dismiss a case on the grounds of forum non conveniens. Piper Aircraft Co. v. Reyno, 454 U.S.

235, 241 (1981). “[D]ismissal will ordinarily be appropriate where trial in the plaintiff’s chosen

forum imposes a heavy burden on the defendant or the court, and where the plaintiff is unable to

offer any specific reasons of convenience supporting his choice.” Id. at 249 (construing Gulf

Oil, 330 U.S. 501). Furthermore, “the strong presumption against disturbing [the] plaintiff[’s]

initial forum choice . . . is weakened . . . when the forum is not [the] plaintiff’s home forum and

most of the relevant events occurred elsewhere.” Demery v. Montgomery County, Md., 602 F.

Supp. 2d 206, 210 (D.D.C. 2009) (quoting Hunter v. Johanns, 517 F. Supp. 2d 340, 344 (D.D.C.

2007)); see also Atlantic Tele-Network, Inc. v. Inter-American Dev. Bank, 251 F. Supp. 2d 126,

136 (D.D.C. 2003) (“[T]he usual presumption [in favor of the plaintiff’s choice of forum] may . .

. be overcome when private and public interest factors clearly point toward[] trial in an

27

alternative forum.” (citing Piper Aircraft, 454 U.S. at 241)). 12

When a court is presented with a motion to dismiss based on forum non conveniens, the

threshold issue for the court is whether there exists an adequate alternative forum. Piper

Aircraft, 454 U.S. at 254 n.22; El Fadl v. Cent. Bank of Jordan, 75 F.3d 668, 676-77 (D.C. Cir.

1996). If an adequate alternative forum exists, the court then must “weigh the relative

conveniences to the parties against the presumption [in favor] of the plaintiff’s forum selection.”

El Fadl, 75 F.3d at 676-77. This requires the court to balance the relevant “private interest

factors” and “public interest factors” and determine whether “the balance of convenience tilts

strongly in favor of trial in the foreign forum.” R. Maganlal & Co. v. M.G. Chem. Co., 942 F.2d

164, 167 (2d Cir. 1991). “[T]he defendant bears the burden of persuasion as to all [the] elements

of the forum non conveniens analysis.” Lacey v. Cessna Aircraft Co., 932 F.2d 170, 180 (3d Cir.

1991); see El Fadl, 75 F.3d at 676-77 (defendant bears the burden of proving adequate

alternative forum). If the court decides that the balance of convenience favors the foreign forum,

the court must still ensure that the “plaintiffs can reinstate their suit in the alternative forum

without undue inconvenience or prejudice.” Pain v. United Techs. Corp., 637 F.2d 775, 784-85

(D.C. Cir. 1980). Because the presumption in favor of the plaintiff’s choice of forum can only

be overcome when the public and private interest factors “clearly point towards trial in the

alternative forum,” Piper Aircraft, 454 U.S. at 255, dismissal for forum non conveniens is the

exception, rather than the rule. Raytheon Eng’rs & Constructors, Inc. v. H L H & Assocs. Inc.,

No. 97-20187, 1998 WL 224531, at *4 (5th Cir. Apr. 17, 1998) (“The burden on a defendant

moving to dismiss in favor of a foreign court . . . is a strong one. The cases . . . make it clear that

12

Although the weight given to a plaintiff’s choice of forum is less when the plaintiff is a foreign resident, Piper

Aircraft, 454 U.S. at 256, “this does not mean, and the Piper Aircraft Court did not say in that case, that [a]

plaintiff's choice is not at least presumptively valid,” Laker Airways Ltd. v. Pan Am. World Airways, 568 F. Supp.

811, 813 n.8 (D.D.C. 1983).

28

dismissal is to be the exception, not the rule, and that there must be a strong showing that the

alternative forum would be significantly more convenient.” (quoting 15 Charles Alan Wright et

al., Federal Practice and Procedure § 3828, at 291-92 (2d ed.1986))); see Gulf Oil, 330 U.S. at

504-09.

C. Motion for Judgment on the Pleadings under Rule 12(c)

In evaluating a motion for judgment on the pleadings under Federal Rule of Civil

Procedure 12(c), courts employ the same standard that governs a Rule 12(b)(6) motion to

dismiss. Jung v. Ass’n of Am. Med. Colls., 339 F. Supp. 2d 26, 35-36 (D.D.C. 2004). And in

deciding either motion, “the Court may not rely on facts outside the pleadings and must construe

the complaint in the light most favorable to the non-moving party.” Id. at 36. The Court may

also consider “any documents either attached to or incorporated in the complaint[,] and matters

of which [the Court] may take judicial notice.” EEOC v. St. Francis Xavier Parochial Sch., 117

F.3d 621, 624 (D.C. Cir. 1997) (footnote omitted). Although the Court must accept the

plaintiffs’ factual allegations as true, any conclusory allegations are not entitled to an assumption

of truth, and even those allegations pleaded with factual support need only be accepted to the

extent that “they plausibly give rise to an entitlement to relief.” Ashcroft v. Iqbal, ___ U.S. ___,

___, 129 S. Ct. 1937, 1950 (2009). The Court may thus only grant judgment on the pleadings if

it appears, even accepting as true all inferences from the complaint’s factual allegations, that the

plaintiff cannot prove any set of facts entitling him to relief. In re United Mine Workers of Am.

Emp. Benefit Plans Litig., 854 F. Supp. 914, 915 (D.D.C. 1994). Where the well-pleaded facts

set forth in the complaint do not permit a court, drawing on its judicial experience and common

sense, to infer more than the “mere possibility of misconduct,” the complaint has not shown that

the pleader is entitled to relief. Iqbal, ___ U.S. at ___, 129 S. Ct. at 1950. If “the court finds that

29

[a] plaintiff[ ][has] failed to allege all the material elements of [his] cause of action,” then the

Court may dismiss the complaint without prejudice, Taylor v. FDIC, 132 F.3d 753, 761 (D.C.

Cir. 1997), or with prejudice, provided that the Court “determines that the allegation of other

facts consistent with the challenged pleading could not possibly cure the deficiency,” Firestone

v. Firestone, 76 F.3d 1205, 1209 (D.C. Cir. 1996) (internal quotation marks and citations

omitted).

III. Legal Analysis

Based on the positions taken by the parties, the issues presented for the Court’s resolution

are multiple. The Court must first determine whether it can exercise personal jurisdiction over

the Delphi Defendants in this case and, if so, whether the plaintiffs’ Third Amended Complaint

should nonetheless be dismissed with respect to those defendants under the doctrine of forum

non conveniens. The Court must then decide whether Counts I through VII of the plaintiffs’

Third Amended Complaint should be dismissed in whole or in part with respect to the AMS

Defendants under the doctrines of claim or issue preclusion. Assuming it survives the AMS

Defendants’ claim and issue preclusion arguments, the Court must then determine whether the

plaintiffs’ RICO claim is properly pleaded. If it is not, or if the Court concludes that the

plaintiffs’ RICO claim is precluded by Judge Penn’s prior rulings, then the Court must assess

whether it possesses subject-matter jurisdiction over the plaintiffs’ remaining claims, all of

which arise under District of Columbia law. Next, the Court must consider whether the breach

of contract, breach of fiduciary duty, and breach of the implied covenant of good faith and fair

dealing claims are duplicative of the plaintiffs’ malpractice claim. Finally, assuming that the

claim is still potentially viable following the Court’s resolution of the issues delineated above,

the Court must determine whether a cause of action exists under District of Columbia law for

30

breach of the implied covenant of good faith and fair dealing. Because the plaintiffs do not

contest the AMS Defendants’ argument that the plaintiffs fail to allege facts sufficient to state a

claim for fraud or fraudulent concealment, the Court will treat that argument as conceded and

dismiss Counts VIII through X of the plaintiffs’ Third Amended Complaint without further

analysis of that issue. 13 See Buggs v. Powell, 293 F. Supp. 2d 135, 141 (D.D.C. 2003) (holding

that “when a plaintiff files an opposition to a dispositive motion and addresses only certain

arguments raised by the defendant, a court may treat those arguments that the plaintiff failed to

address as conceded”).

A. The Delphi Defendants

1. Personal jurisdiction

The Court must engage in a two-part inquiry to determine whether it may exercise

specific personal jurisdiction over non-resident defendants. 14 First, the Court must determine

whether jurisdiction may be exercised under the District of Columbia’s long-arm statute, D.C.

13

The defendants argue that the fraud-based claims (Counts VIII through X) must be dismissed because the Court,

rather than Dr. Lans, was the target of the alleged fraud. AMS Defs.’ Mem. at 14; AMS Defs.’ Reply at 19. The

defendants explain that reliance by the plaintiff is required for a fraud claim (Count VIII), and that Dr. Lans does not

claim any personal reliance upon the alleged misrepresentations. AMS Defs.’ Mem. at 14-15. In addition, the

defendants claim that the allegedly concealed facts for the fraudulent concealment claims (Counts IX & X) were

hidden from the Court, not Dr. Lans or Uniboard, that “it was AMS’[s] intention to deceive the Court,” and that the

plaintiffs do not allege that they relied on the purported misrepresentations. Id. at 15. Furthermore, the AMS

Defendants maintain that the plaintiffs fail to assert lack of actual or constructive notice of the alleged falsehoods

because Dr. Lans fails to state that he was unaware of the content of AMS’s representation to the Court. Id. at 15-

16.

14

Under District of Columbia law, personal jurisdiction can be satisfied by demonstrating that the individual Delphi

Defendants have sufficient contacts with the District of Columbia, see Int’l Shoe Co. v. Washington, 326 U.S. 310,

316 (1945), which may exist in two forms: (1) general contacts that are “continuous and systematic,” such that the

forum has jurisdiction over any matter involving the defendant, see Helicopteros Nacionales de Colombia, S.A. v.

Hall, 466 U.S. 408, 415-16 (1984); and (2) specific contacts that give rise to the actual claims against the defendant,

see D.C. Code § 13-423 (2001). It is clear, and the plaintiffs do not contend otherwise, that the Court does not have

general jurisdiction over any of the Delphi Defendants. See id. § 13-422. Thus, if personal jurisdiction exists here

at all, it must exist based on specific contacts with the District of Columbia.

31

Code section 13-423 (2001). 15 Second, the Court must determine whether the exercise of

personal jurisdiction would satisfy the requirements of due process. GTE New Media Servs. Inc.

v. BellSouth Corp., 199 F.3d 1343, 1347 (D.C. Cir. 2000) (citing United States v. Ferrara, 54

F.3d 825, 828 (D.C. Cir. 1995)). The due process analysis turns on whether a defendant’s

“minimum contacts” with the District of Columbia are such that “the maintenance of the suit

does not offend traditional notions of fair play and substantial justice.” Int’l Shoe Co. v.

Washington, 326 U.S. 310, 316 (1945) (internal quotation marks and citations omitted). These

minimum contacts must arise from “some act by which the defendant purposefully avails

[himself] of the privilege of conducting activities within the forum State, thus invoking the

benefits and protections of its laws.” Asahi Metal Indus. Co. v. Super. Ct. of Cal., Solano

County, 480 U.S. 102, 109 (1987) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475

(1985)). The defendant must have “purposefully directed his activities at residents of the forum,

and the litigation results from alleged injuries that arose out of or relate to those activities.”

Burger King, 471 U.S. at 472-73 (internal citations and quotation marks omitted). In other

words, courts must ensure that “the defendant’s conduct and connection with the forum State are

15

Section 13-423(a) states in pertinent part:

A District of Columbia court may exercise personal jurisdiction over a person,

who acts directly or by an agent, as to a claim for relief arising from the person’s

– (1) transacting business in the District of Columbia; (2) contracting to supply

services in the District of Columbia; (3) causing tortious injury in the District of

Columbia by an act or omission in the District of Columbia; (4) causing tortious

injury in the District of Columbia by an act or omission outside the District of

Columbia if he regularly does or solicits business, engages in any other

persistent course of conduct, or derives substantial revenue from goods used or

consumed, or services rendered, in the District of Columbia; (5) having an

interest in, using, or possessing real property in the District of Columbia; (6)

contracting to insure or act as surety for or on any person, property, or risk,

contract, obligation, or agreement located, executed, or to be performed within

the District of Columbia at the time of contracting, unless the parties otherwise

provide in writing; or (7) marital or parent and child relationship in the District

of Columbia . . . .

D.C. Code § 13-423(a); see also id. § 13-421 (defining “person” to include a partnership).

32

such that he should reasonably anticipate being haled into court there.” World-Wide

Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980).

a. Delphi 16

The Delphi Defendants assert that because they have not had minimum contacts with the

District of Columbia and it would therefore be unreasonable to assert jurisdiction over them, the

Court lacks personal jurisdiction over them as a constitutional matter. Delphi Defs.’ Mem. at 2,

8-20. The Delphi Defendants argue that they do not have sufficient minimum contacts with the

District of Columbia to support personal jurisdiction over them because: (1) they “did not

conduct litigation-related activities in the District of Columbia,” id. at 11-13; (2) the “single

visit” to the District of Columbia to meet with AMS and several of Dr. Lans’s foreign lawyers

“does not constitute minimum contacts with the District of Columbia,” id. at 13-14 (internal

quotation marks omitted); (3) none of the Delphi Defendants’ other visits have any connection to

the plaintiffs’ claims, id. at 14 n.7; and (4) the Delphi Defendants’ “alleged inaction cannot

support the exercise of personal jurisdiction” because their alleged inaction only emphasizes

their lack of involvement in the litigation, id. at 16. Specifically, the Delphi Defendants argue

that they never participated in litigation activities in the District, such as mediation or discovery,

did not sign any pleadings, and did not make an appearance in this Court. Id. at 13. Rather, they

allege, their only participation in the litigation was “assisting [Dr.] Lans and other Swedish

witnesses in responding to discovery and reviewing certain papers at the request of [Dr.] Lans’s

16

The Court appreciates that the exercise of personal jurisdiction must be based on the individual actions of each

defendant. Atlantigas, 290 F. Supp. 2d at 42. However, because personal jurisdiction over Delphi, as a partnership,

is based on the contacts all of its partners had with the District of Columbia, Donatelli v. Nat’l Hockey League, 893

F.2d 459, 466-67 (1st Cir. 1990); see, e.g., Willis v. Semmes, Bowen & Semmes, 441 F. Supp. 1235, 1238-40 (E.D.

Va. 1977), the Court will address in this section the collective contacts of all the Delphi Defendants. Thus, despite

the Court’s collective references to the Delphi Defendants, this section’s analysis concerns only whether personal

jurisdiction can be exercised over Delphi. The Court will address whether personal jurisdiction can be exercised

over the individual Delphi defendants separately in section III.A.1.b, infra, of this opinion.

33

U.S. counsel,” and those actions were performed in Sweden. Id. Moreover, the Delphi

Defendants argue that “the evidence in this case demonstrates that the decision to file suit in this

Court in [Dr.] Lans’s name only was not made at the meeting in Washington, D.C.,” id. at 14,

and that “Mr. Utterström and Mr. Lindström deny that . . . a final decision to do so was made at

that [meeting],” id. As evidence of their position, the Delphi Defendants point to: (1) the Fee

Agreement which vests AMS with “sole and exclusive discretion” in deciding whether to pursue

litigation, id. at 15; Pls.’ Delphi Opp’n, Ex. A, Tab 6 (Fee Agreement) at 3; (2) testimony from

Dr. Lans in one of the underlying patent litigation lawsuits, where he stated that “[AMS] had

complete control over the litigation involving the ‘986 Patent,” Delphi Defs.’ Mem. at 15 (citing

Motion of Håkan Lans and Uniboard Aktiebolag for Reconsideration of the Courts September 6,

2001 Order Concerning Attorneys’ Fees (“Mot. for Recons.”), Declaration of Håkan Lans (“Lans

Decl.”), Lans v. Gateway 2000, Inc., Civil Action No. 97-2523 (JGP), Civil Action No. 97-2526

(JGP), Civil Action No. 99-3153 (JGP) (D.D.C. Jan. 14, 2002)); (3) the declaration of Dr. Lans

in Lans v. Gateway 2000, Inc., dated January 14, 2002, stating that “[AMS] decided who the

named plaintiff should be,” id.; and (4) the first two versions of the complaint which did not

specifically allege that the Delphi Defendants participated in the decision, id. 17

The plaintiffs argue, on the other hand, that the Delphi Defendants had sufficient contacts

with the District of Columbia because (1) “[t]he Delphi Defendants’ communications with AMS

are contacts for the purposes of the Due Process Clause,” Pls.’ Delphi Opp’n at 7-9; see also id.

at 7-9, (2) the Delphi Defendants participated in the July 1997 meeting “to discuss the critical

issue of who would be named [the] plaintiff in litigation,” id. at 9-11, and (3) “the actions of

AMS are attributable to Delphi because the Delphi Defendants and AMS acted as partners” or

17

The Delphi Defendants were not added as parties to this case until the Second Amended Complaint was filed.

34

alternatively “entered into a co-counsel relationship,” id. at 11-13. More specifically, the

plaintiffs assert that the Delphi Defendants “engaged in a persistent course of contacts with the

forum – by fax, phone, email and personal meetings, including at least three meetings in the

District of Columbia – all directed toward . . . persuading Dr. Lans to engage them as counsel for

activity in the District, and . . . representing Dr. Lans in activity in the District.” Id. at 6-7. In

addition, the plaintiffs allege that the Delphi Defendants actively participated in the infringement

litigation, not only by meeting with AMS regarding the litigation, but also by reviewing the

notice of infringement letters, preparing responses to discovery requests, and drafting

declarations to the Court in relation to the infringement litigation. Id. at 8. Finally, in support of

their argument that AMS and the Delphi Defendants formed a partnership or, alternatively, a co-

counsel relationship, the plaintiffs point to the Fee Agreement which, the plaintiffs allege, states

that AMS and Delphi “jointly” represent Dr. Lans, jointly finance any litigation, are entitled to

33% of any fees collected under the agreement, and implies a separate agreement between

Delphi and AMS to “divide the profits.” Id. at 11. The plaintiffs also point to the fee splitting

agreement between AMS, Delphi, and the ‘986 Partners, and Mastriani’s testimony that “the

Delphi Defendants were authorized to speak on behalf of AMS in its negotiations with Dr.

Lans.” Id. In addition, the plaintiffs contend that the “Delphi Defendants [p]urposely [d]irected

[t]heir [c]ontacts [t]oward [t]his [f]orum,” id. at 14, and “Dr. Lans’s and Uniboard’s claims arise

out of the Delphi Defendants’ contacts with” the District of Columbia, id. at 15.

In response, the Delphi Defendants deny that AMS and Delphi formed a partnership,

contending that (1) Delphi and AMS agreed to jointly represent Dr. Lans only in relation to the

“identification of potential infringers,” and AMS had exclusive control over any litigation,

Delphi Defs.’ Reply at 7, (2) the Fee Agreement does not suggest that AMS and Delphi would

35

jointly finance any litigation or that expenses would be shared by the firms, but rather, only

clarifies that Dr. Lans would not be responsible for expenses incurred by the firms and the firms

would not be responsible for expenses incurred by Dr. Lans, id. at 8, (3) the sharing of fees

obtained from enforcement of the patent does not constitute sharing of profits, but rather

constitutes the division of gross returns, id. at 8-9, and (4) even if the firms did share profits, an

agreement to share profits is not sufficient, by itself, to create a partnership, id. at 9-10. The

Delphi Defendants also claim that AMS and Delphi did not create a co-counsel relationship,

stating that the case relied on by the plaintiffs is distinguishable because the nonresident lawyers

in that case were primarily responsible for the litigation underlying the plaintiffs’ claims, the

plaintiffs were residents of the forum state, and the fee agreement was written according to the

forum state’s law. Id. at 10-11.

i. The District of Columbia long-arm statute

The plaintiffs have not directed the Court to any proposed statutory bases for their

jurisdictional argument. Nevertheless, the Court will assume that the plaintiffs are attempting to

assert jurisdiction under D.C. Code section 13-423(a)(1), see FC Inv. Grp. LC v. IFX Mkts.,

Ltd., 479 F. Supp. 2d 30, 38 (D.D.C. 2007) (assuming the statutory bases for plaintiffs’

jurisdictional argument where the plaintiffs did not provide such guidance to the court), the only

subsection of the District of Columbia long-arm statute arguably supporting jurisdiction based on

the facts as presented by the plaintiffs. 18 For the following reasons, the Court finds that it may

18

The Court concludes that none of the remaining provisions of the District of Columbia long-arm statute appear to

support the Court having jurisdiction over this action. Subsection (a)(2) is inapplicable because this provision only

applies “to a non-resident who injects itself into the District by agreeing to provide some service to [a] resident in

the District,” and because “[t]he mere existence of a contract between a non-resident and a resident is not a

sufficient basis on which to claim jurisdiction over the non-resident in the District of Columbia.” COMSAT Corp.

v. Finshipyards S.A.M., 900 F. Supp. 515, 524 (D.D.C. 1995). And here, a non-resident and resident defendant

agreed to provide services to non-resident plaintiffs. Subsection (a)(3), while supporting jurisdiction over the

plaintiffs’ malpractice and RICO claims, fails to support jurisdiction over the remaining claims. The tort-based

(continued . . .)

36

exercise jurisdiction in this case under subsection (a)(1) of the District of Columbia long-arm

statute.

Subsection (a)(1)’s “transacting any business” clause has been interpreted to be

“coextensive in reach with the personal jurisdiction allowed by the due process clause of the

United States Constitution,” Shoppers Food Warehouse v. Moreno, 746 A.2d 320, 329 (D.C.

2000), and thus to merge into a single inquiry, GTE, 199 F.3d at 1347 (citing Ferrara, 54 F.3d at

828). 19 As a result of this congruence, in order to establish that this Court has specific

(. . . continued)

claims under which (a)(3) would be applicable are the malpractice, RICO, intentional infliction of emotional

distress, and conversion claims. Section (a)(3) requires that both the alleged tortious injury and the act forming the

basis of the claim must have occurred in the District, and the plaintiffs are alleging both economic and emotional

injuries. Emotional injury occurs where the plaintiff lives or works, Calder v. Jones, 465 U.S. 783, 785, 788-89

(1984); Masterson-Cook v. Criss Bros. Iron Works, Inc., 722 F. Supp. 810, 813 (D.D.C. 1989), and therefore

subsection (a)(3) does not provide a basis for jurisdiction over the intentional infliction of emotional distress claim

because any injury based on this claim occurred in Sweden. See Compl. ¶¶ 15-16 (stating that the plaintiffs reside in

Sweden). Economic injury, on the other hand, occurs at “the location of the original event which caused the injury,

not the location where the resultant damages are subsequently felt by the plaintiff.” Helmer v. Doletskaya, 393 F.3d

201, 208 (D.C. Cir. 2004) (quoting Mareno v. Rowe, 910 F.2d 1043, 1046 (2d Cir. 1990)). Therefore, as to the

malpractice claim, any injury occurred when the suit was dismissed in the District of Columbia. See, e.g., Kowalski

v. Doherty, Wallace, Pillsbury & Murphy, Attorneys at Law, 787 F.2d 7, 8 (1st Cir. 1986) (tortious injury in a legal

malpractice action was the loss of the right to recover in a lawsuit, not the “effect” of the loss on the plaintiff).

Similarly, in regards to the RICO claim, the injury occurred when the court ordered the award of attorneys’ fees

against the plaintiffs, which occurred in the District of Columbia. Any injury related to the conversion claim,

however, occurred where the escrow account was located. See Wenz v. Memery Crystal, 55 F.3d 1503, 1506-08

(10th Cir. 1995) (holding that, where a Colorado resident sued a London law firm for wrongfully withdrawing funds

from his London trust account, the injury or loss occurred where the account was located because “the unauthorized

disbursals occurred in London and were from a London account”). Because the plaintiffs bear the burden of

establishing personal jurisdiction, and they have failed to delineate the location of the escrow account, the plaintiffs

have not satisfied the requirements of subsection (a)(3) as to their conversion claim. Furthermore, the alleged acts

(or inactions) underlying the malpractice and RICO claims occurred in the District of Columbia, where the decision

to file the first suit in Dr. Lans’s name was made, and the failure to correct Mastriani’s allegedly false statement to

the Court occurred. See Compl. ¶¶ 60, 92 (stating that the meeting to decide in whose name to file suit occurred in

the District of Columbia, and that Mastriani filed the allegedly false statement in this Court). Subsection (a)(4) is

inapplicable because the defendants do not “regularly do[] or solicit[] business, engage[] in any other persistent

course of conduct, or derive[] substantial revenue from . . . services rendered, in the District of Columbia.” D.C.

Code § 13-423(a)(4). Finally, subsections (a)(5) through (a)(7) have no applicability to the facts of this case.

19

The plaintiffs assert that the District of Columbia long-arm statute, in its entirety, is “coextensive with the limits

of Due Process,” Pls.’ Delphi Opp’n at 5, and therefore the “statutory and constitutional analysis tend[s] to merge

and become[s] essentially the same,” id. at 6 (internal quotation marks omitted); they therefore contend that

“nothing in the Federal Rules of Civil Procedure require[s Dr.] Lans to plead the statutory basis for personal

jurisdiction,” id. at 5. The plaintiffs’ argument misconstrues the reach of each paragraph of the long-arm statute.

While subsection (a)(1) has been interpreted to be co-extensive with the limits of due process, the same is not true of

the other subsections of the long-arm statute. See Crane v. Carr, 814 F.2d 758, 762 (D.C. Cir. 1987) (“The drafters

(continued . . .)

37

jurisdiction under section 13-423(a)(1), a plaintiff must demonstrate that (1) the defendant

transacted business in the District of Columbia, (2) the cause of action arose from the business

transacted in the District of Columbia, and (3) the “defendant had minimum contacts with the

District of Columbia such that the Court’s exercise of personal jurisdiction would not offend

‘traditional notions of fair play and substantial justice.’” DSMC, Inc. v. Convera Corp., 273 F.

Supp. 2d 14, 20 (D.D.C. 2002) (quoting Int’l Shoe, 326 U.S. at 316); see also Jacobsen v. Oliver,

201 F. Supp. 2d 93, 104 (D.D.C. 2002); Formica v. Cascade Candle Co., 125 F. Supp. 2d 552,

553 (D.D.C. 2001).

The Court is persuaded that the plaintiffs have a statutory basis for jurisdiction being

exercised by this Court under section 13-423(a)(1). Delphi’s regular communications into the

District of Columbia in regard to Dr. Lans’s representation, standing alone, do not constitute the

transaction of business. See IFX Mkts., 479 F. Supp. 2d at 39 (holding that the defendant’s

“regular” phone calls into the District of Columbia, standing alone, do not constitute “transacting

business” in the District of Columbia). However, when these communications are combined

with the business meetings that were conducted in the District of Columbia, along with Delphi

contracting with a District of Columbia law firm to assist with the representation of Dr. Lans and

Uniboard, and that contract ultimately being performed in the District by filing the patent

infringement lawsuit in this Court, Delphi clearly conducted business in the District of

(. . . continued)

of this provision apparently intended that the (a)(4) subsection would not occupy all of the constitutionally available

space. . . . This court has explicitly noted, moreover, that (a)(4) of the D.C. long-arm statute may indeed stop short

of the outer limit of the constitutional space.”); Moncrief v. Lexington Herald-Leader Co., 807 F.2d 217, 221 (D.C.

Cir. 1986) (“Paragraph (a)(3) . . . is a precise and intentionally restricted tort section which stops short of the outer

limits of due process . . . .” (internal quotation marks and citations omitted)); Mouzavires v. Baxter, 434 A.2d 988,

991 (D.C. 1981) (noting that “Congress intended to vest courts of the District with jurisdictional reach identical to

that in effect in Maryland and substantially the same as that in effect in Virginia,” and that Maryland and Virginia

courts have interpreted several provisions under their long-arm statutes as having a much narrower scope than

subsection (a)(1)). However, because this Court has found that only subsection (a)(1) applies to the facts of this

case, this overstatement on the part of the plaintiffs has no effect on the personal jurisdiction analysis in this case.

38

Columbia. See Dooley v. United Techs. Corp., 803 F. Supp. 428, 435 (D.D.C. 1992) (holding

that “conducting business meetings in the District; sending and receiving mail, telefaxes, and

phone calls to and from the District[;] and holding out Washington, D.C.-based counsel as its

representative in business matters” constituted transacting business in the District); Exponential

Biotherapies, Inc. v. Houthoff Buruma N.V., 638 F. Supp. 2d 1, 7 (D.D.C. 2009) (“[N]egotiating

or performing business contracts has qualified as ‘transacting business’ for purposes of § 13-

423(a)(1) . . . .”).

Moreover, a non-resident defendant transacts business within the District, under

subsection (a)(1), when his contractual activities have an effect in the District. Helmer v.

Doletskaya, 290 F. Supp. 2d 61, 67 (D.D.C. 2003). Here, the Delphi Defendants contracted with

AMS to provide counsel to the plaintiffs by pursuing potential patent infringers in the United

States, either by negotiating licenses with the potential infringers or by initiating legal action

against the potential infringers. See Pls.’ Delphi Opp’n, Ex. A, Tab 6 (Fee Agreement) at 2; id.,

Ex. A, Tab 12 (Mastriani Deposition Excerpts) at 77:4-77:12. Although the Fee Agreement was

executed in Sweden, and did not specifically state where the contract would be performed, the

Delphi Defendants solicited a District of Columbia law firm to assist them in their representation

of the plaintiffs in the United States, and the performance of the contract resulted in litigation

being initiated in the District. Assuming, as the Court must at this stage of the litigation, that the

Delphi Defendants participated in the discussion regarding whether to bring suit under Dr.

Lans’s name only, N.Y. Zoological Soc’y, 894 F.2d at 455-56 (factual discrepancies, when

assessing a motion to dismiss on jurisdictional grounds, must be resolved in favor of the

plaintiff), Delphi transacted business within the District because the performance of the contract

resulted in litigation initiated in the District, and the claims asserted by the plaintiffs relate to that

39

litigation and the overall performance of the contract, see, e.g., Willis v. Semmes, Bowen &

Semmes, 441 F. Supp. 1235, 1240 (E.D. Va. 1977) (holding that under Virginia’s “contracting to

supply services” provision of its long-arm statute, a non-resident attorney who contracted to act

as the plaintiff’s counsel and provide those services in Virginia through local counsel was subject

to jurisdiction in Virginia even though “the contract was made outside the state and did not

specifically require performance in Virginia” because “performance did actually occur within

[Virginia]”); cf. Atlantigas, 290 F. Supp. 2d at 47 (concluding that this Court did not have

personal jurisdiction over the defendant solely because the service contracts were with a District

of Columbia company when the agreements were negotiated and executed wholly outside of the

District and all events making up claim occurred outside of the District).

ii. Due Process

Having established a basis for this Court exercising jurisdiction under the District of

Columbia long-arm statute, the plaintiffs must next demonstrate that the claims underlying the

litigation directly arise out of, or relate to, the defendants’ forum activities, Burger King, 471

U.S. at 472-73, and that the defendants “purposefully availed [themselves] of the privilege of

conducting activities within the forum,” Asahi, 480 U.S. at 109. For the following reasons, the

Court agrees with the plaintiffs that the exercise of jurisdiction in this case comports with the

requirements of due process.

Delphi notes that it has no offices, assets, or property in the District of Columbia, nor

does it have any assets or offices in the United States. Delphi Defs.’ Mem., Utterström Decl. ¶ 3.

The plaintiffs respond that Delphi’s contacts with the forum are nonetheless sufficient for the

Court to exercise personal jurisdiction without offending the Constitution. These contacts

include: (1) initiating contact with Dr. Lans and then with AMS, a District of Columbia law firm,

40

regarding the pursuit of patent infringers in the United States, Compl. ¶¶ 32-33; (2) contracting

with a District of Columbia law firm to assist with the representation of Dr. Lans in the United

States and share fees associated with that representation, Compl. ¶¶ 40-45; (3) communications,

in the form of letters, facsimiles, e-mails, and memoranda, between AMS in the District of

Columbia and Delphi in Sweden regarding the Fee Agreement, licensing issues, and the patent

infringement suit; 20 (4) maintenance of a website representing that Lindström is a member of the

District of Columbia Bar, the Bars of the Supreme Court of the United States and California, and

that Lindström specializes in United States law, Compl. ¶ 63; (5) several meetings in the District

of Columbia attended by the Delphi Defendants, including the July 1997 meeting at AMS’s

office, to discuss the status of the Lans patents or the ‘986 Patent litigation; 21 (6) failing to

prevent AMS from filing the lawsuit without preparing and filing documents to clarify

20

These communications include: (1) the December 10, 1995, memorandum from Utterström to AMS (transmitted

by Lindström) regarding the color graphics patent, Pls.’ Delphi Opp’n, Ex. A, Tab 2; (2) the December 13, 1995,

letter from Mastriani to Lindström regarding the Lans color graphics patent and options available to Dr. Lans, Pls.’

Delphi Opp’n, Ex. A, Tab 3; (3) the December 18, 1996, letter from Utterström to Mastriani admitting that Delphi

was not permitted under Swedish ethics rules to finance the expenses of a client, Compl. ¶ 47; (4) the January 22,

1997, communication from Mastriani to Utterström relating to an issue with the scope of the IBM license, and

including portions of the IBM license for Utterström to review, which contained the language specifying that

Uniboard was the licensor, id. ¶ 52; (5) the January 30, 1997, facsimile from Utterström to Mastriani stating that Dr.

Lans indicated he was not willing to modify the Fee Agreement in any way that might affect his 67% share of the

license fees, or have deducted the expenses for litigation from his license income prior to payment of fee and

expenses to the attorneys, Pls.’ Delphi Opp’n, Ex. A, Tab 10; (6) the February 3, 1997, agreement between AMS,

Delphi, and the Montgomery, Alabama-based ‘986 Partners, whereby the ‘986 Partners agreed to advance up to

$300,000 to fund the infringement litigation, id., Ex. A, Tab 8; (7) the April 9, 1997, correspondence between

Schaumberg (a principal at AMS), Klaus (a German lawyer), and Lindström regarding Uniboard’s rights under the

IBM/Uniboard license, Compl. ¶ 56; (8) the April 17, 1997, communication from Utterström to Mastriani

confirming that all licensing fees for the patent were to be paid to Uniboard, id. ¶ 57; (9) the August 7, 1997, letter

from Utterström to Mastriani regarding the taxation of the licensing fees, id. ¶ 58; (10) the August 8, 1997, letter

from Utterström to Mastriani regarding a taxation issue, id. ¶ 59; (11) the forwarding of the Micron-Diamond

settlement agreement to AMS after it was reviewed and approved, id. ¶ 83; and (12) Mastriani’s communication of

his allegedly false statement to Delphi, id. ¶¶ 3-7.

21

Utterström made a total of four visits to the District of Columbia related to this case during the relevant time

period – three in which he met with the AMS attorneys at their office to receive updates on the status of the Lans

patent matters, including the July 1997 meeting, Delphi Defs.’ Mem., Utterström Decl. ¶ 11, and a meeting with

Compaq, at Dr. Lans’s request, in December of 1998 at AMS’s office, id., Utterström Decl. ¶ 12. Lindström made

only one visit to the District of Columbia related to the Lans United States patent matters – the July 1997 meeting.

Id., Lindström Decl. ¶¶ 12-14.

41

ownership of the patent, Compl. ¶ 74; (7) assisting with litigation by submitting declarations,

translating, drafting, reviewing, and commenting on interrogatory responses, and preparing

affidavits filed in this Court, Delphi Defs.’ Mem., Utterström Decl. ¶¶ 10, 16; id., Lindström

Decl. ¶¶ 16-17; Pls.’ Delphi Opp’n, Ex. A, Tab 11 (Evidentiary Hearing Transcript) at 91:15-

92:11; (8) misleading the Court about the defendants’ knowledge of Uniboard’s interest in the

patent prior to the filing of the lawsuit, Compl. ¶¶ 3-7, 95, 97, 148; and (9) failing to make sure

the material filed in response to the motion for attorneys’ fees was factually accurate and

neglecting to inform Dr. Lans of the conflict of interest, id. ¶ 110.

It is clear that the claims in this case arise out of or relate to Delphi’s activities in the

District of Columbia. In an attempt to adequately represent Dr. Lans in the United States

matters, Delphi secured a co-counsel relationship with District of Columbia attorneys. And the

parties formed a relationship through the Fee Agreement, the performance of which resulted in

litigation initiated in the District of Columbia, and the claims relate to that litigation and the

overall performance of the contract. These conclusions are based on several factors. First, the

failure to file suit in the name of the correct party in the underlying patent litigation is the

centerpiece of plaintiffs’ malpractice claim, and the Delphi Defendants’ participation in the July

1997 meeting in the District of Columbia, when who to name as the plaintiff was discussed, is

inextricably related to the purported failure to file suit in the name of the correct party. Second,

the plaintiffs claim that the defendants breached the Fee Agreement by refusing to further

represent Dr. Lans in his appeals in courts located in the District of Columbia unless he paid the

defendants additional money, and by converting funds owed under the Fee Agreement and the

Escrow Agreement created to fund the United States project. Therefore, it is apparent that the

plaintiffs’ claims arise from Delphi’s business activities in the District of Columbia.

42

Whether Delphi purposely had minimum contacts with the District of Columbia,

however, requires closer scrutiny. Delphi’s letters, facsimiles, e-mails, mailings, and other

communications into and from the District of Columbia unquestionably qualify as contacts for

purposes of the Court’s jurisdiction analysis. See Dooley, 803 F. Supp. at 435 (basing

jurisdiction, in part, on sending and receiving mail, telefaxes, and phone calls to and from the

District). However, these communications alone are insufficient to establish personal

jurisdiction. Exponential Biotherapies, 638 F. Supp. 2d at 9 (holding that the defendant law

firm’s telephone calls, e-mails, facsimiles, and mailings, including invoices, to the plaintiff’s

District of Columbia office were insufficient for personal jurisdiction, because “such

communications are incidental to nearly every business relationship” (citing Dove v. United

States, No. 86-cv-65, 1987 WL 18739, at *3 (D.D.C. Oct. 9, 1987) (“[T]he mere delivery of

documents . . . does not confer jurisdiction under 423(a)(1).”))).

The plaintiffs also allege several failures on the part of Delphi as constituting contacts

with this forum, and such allegations can qualify as contacts for personal jurisdiction purposes.

See, e.g., Jacobsen, 201 F. Supp. 2d at 107 (failure to include children as parties in a suit).

Similarly, the failure to disclose material information can constitute purposeful direction of

material omissions into a forum, Wein Air Alaska, Inc. v. Brandt, 195 F.3d 208, 213 (5th Cir.

1999), but this will be the case only where the failure to disclose the information is an “intrinsic

part of communications with [the forum],” Porter v. Berall, 142 F. Supp. 2d 1145, 1148 (W.D.

Mo. 2001), and “actually give rise to a cause of action,” Wein, 195 F.3d at 213. For example,

where a failure to disclose is the basis of a claim against a lawyer, the lawyer’s continual

communication with the forum while failing to disclose a material fact would qualify as

purposeful direction of material omissions into the forum. Id. However, Delphi’s alleged failure

43

to prevent the AMS Defendants from filing the lawsuit without clarifying ownership of the ‘986

Patent, Compl. ¶ 74, failure to correct Mastriani’s allegedly false statement to this Court, along

with material filed with this Court in support of the motion for attorneys’ fees, Compl. ¶¶ 3-7,

95, 97, 110, 148, and failure to inform Dr. Lans of its conflict of interest, Compl. ¶ 110, were not

intrinsically connected to any communications with this forum that underlie any of the claims

made against Delphi. In other words, Delphi made no affirmative communications related to

these alleged omissions on their part, and, therefore, these alleged “inactions,” Delphi Def.’s

Mem. at 16, are not germane for jurisdictional purposes.

Delphi’s website is similarly insufficient to subject Delphi to personal jurisdiction in the

District of Columbia. While a defendant’s advertising activity aimed at District residents can

subject it to the personal jurisdiction of the District courts, see, e.g., Shoppers Food Warehouse,

746 A.2d at 330-37, the maintenance of a website that is merely accessible to District residents is

insufficient to subject a defendant to personal jurisdiction here, Exponential Biotherapies, 638 F.

Supp. 2d at 4-5, 7, 9. Admittedly, Delphi’s website represented that Lindström is a member of

the District of Columbia Bar and that he specializes in United States law. Pls.’ Delphi Opp’n,

Ex. A, Tab 7 (Delphi website printout). These representations were not, however, directed at

District of Columbia residents, and therefore, Delphi’s website does not constitute purposeful

availment of the privilege of conducting business in the District. See Exponential Biotherapies,

638 F. Supp. 2d at 4-5, 7, 9 (holding that a foreign law firm’s maintenance of a website that

described the law firm’s membership in the American Bar Association and touted its “many U.S.

based clients,” but did not advertise specifically to District of Columbia residents, was

insufficient to subject the defendant to personal jurisdiction in the District, even if the defendant

intended to attract the business of United States residents generally).

44

The Delphi Defendants’ participation in litigation-related activities alone also does not

subject Delphi to personal jurisdiction in the District of Columbia. Delphi cites to several

decisions by courts in other jurisdictions where the courts declined to find minimum contacts

based on a non-resident lawyer’s participation in litigation-related activities in the forum state.

Delphi Defs.’ Mem. at 12. 22 The relevant question, however, is not whether the activity was

related to the underlying litigation, but rather whether such activity created a sufficient

relationship between the defendants and the District under the Due Process Clause to permit the

exercise of personal jurisdiction. 23 The Delphi Defendants assisted with discovery through the

22

The plaintiffs failed to address the defendants’ argument on this point in their opposition, and did not direct the

Court to any District of Columbia case where a court considered formal participation in litigation-related activities,

such as discovery, depositions, settlement conferences, mediation, or arguing motions before a court, as contacts

with the District for personal jurisdiction purposes.

23

Compare, e.g., Trinity Indus., Inc. v. Myers & Assocs., Ltd., 41 F.3d 229, 231 (5th Cir. 1995) (holding that two

attorney defendants purposefully availed themselves of the benefits of the forum where one attorney’s contacts with

the forum included appearing pro hac vice for the client in the Northern District of Texas, and the other attorney

completed several patent applications and appeared in the Northern District of Texas litigation for eight months),

Joye v. Heuer, No. 93-2004, 1995 WL 552028, at *3 (4th Cir. Sept. 19, 1995) (personal jurisdiction proper where

one of the contacts with the forum was attending depositions in the South Carolina forum in regards to a California

action), Kan. Tpk. Auth. v. Barr Bros. & Co., No. 89-2176-S, 1989 WL 117314, at *2 (D. Kan. Sept. 11, 1989)

(finding personal jurisdiction where the defendant moved for and obtained admission pro hac vice, entered into a

contract with a local law firm for services as local counsel, filed numerous pleadings and motions, appeared before

and presented arguments to courts in the forum, sent correspondence and made telephone calls into the forum, and

attended depositions and other discovery in the forum), Schleit v. Warren, 693 F. Supp. 416, 422 (E.D. Va. 1988)

(“[A] lawyer who knowingly serves abusive process in a jurisdiction may expect to be haled into court where

service was effectuated.”), and Willis, 441 F. Supp. at 1238-40 (personal jurisdiction established where attorney’s

legal representation of client brought him into Virginia for a bankruptcy proceeding in which settlement agreements

were signed and submitted to the Court, the settlement agreement being “the very embodiment and finalization of a

course of legal malpractice and breach of contract” under plaintiff’s theory of liability), with Rossi v. Wohl, 246 F.

App’x 856, 858 (5th Cir. 2007) (agreeing with holding of district court that an attorney’s contacts incidental to the

representation of a client and contacts arising out of the representation are insufficient to establish minimum

contacts), Sher v. Johnson, 911 F.2d 1357, 1360, 1362-63 (9th Cir. 1990) (finding no personal jurisdiction in

California court over partners of Florida law firm in a malpractice action arising out of representation in Florida case

where at most one of the partners made phone calls to and sent letters to California, and traveled to the state on

several occasions to provide services to his client), Austad Co. v. Pennie & Edmonds, 823 F.2d 223, 226 (8th Cir.

1987) (refusing to exercise personal jurisdiction over a New York law firm representing a South Dakota corporation

in Maryland litigation, where the contacts included a single three-day document and information gathering visit by

an associate and law clerk from the firm because the defendants did not have an office in the forum, had never

advertised or solicited business in the forum, did not actively seek out the in-forum plaintiff as a client, none of the

law firm’s attorneys resided in the forum or maintained a license to practice law there, and the actions giving rise to

the lawsuit did not occur in the forum), Star Tech., Inc. v. Tultex Corp., 844 F. Supp. 295, 298 (N.D. Tex. 1993)

(declining to exercise personal jurisdiction over a District of Columbia lawyer in Texas when his only connections

(continued . . .)

45

submission of declarations, the preparation of affidavits filed in this Court, and the translation,

drafting, reviewing, and commentary on interrogatory responses, along with also allegedly

reviewing and approving the Complaint and the Micron-Diamond settlement agreement and its

forwarding to AMS in the District. Delphi Defs.’ Mem., Utterström Decl. ¶¶ 10, 16; id.,

Lindström Decl. ¶¶ 16-17; Pls.’ Delphi Opp’n, Ex. A, Tab 11 (Evidentiary Hearing Transcript) at

90:19-92:11. The Court finds that these activities are alone insufficient to satisfy the due process

requirement of purposeful availment.

In this case, however, there is more than just the communications sent into the forum and

participation in the insubstantial litigation-related activities discussed above. Here, there were

also meetings regarding the representation attended by the Delphi Defendants in the District of

Columbia, including the July 1997 meeting when alleged malpractice occurred. There is also an

underlying long-term contractual relationship, initiated by Delphi with Dr. Lans and a District of

Columbia law firm, which forms the basis of many of the plaintiffs’ claims. These meetings and

the contractual relationship, combined with Delphi’s communications into the forum and

litigation-related activities, demonstrate that Delphi purposefully availed itself of the privilege of

conducting business in the District of Columbia.

Regarding the Delphi Defendants visits to the District of Columbia, the defendants focus

solely on the July 1997 meeting at AMS’s office because it is “[t]he centerpiece of the

(. . . continued)

with the forum in connection with the representation of his co-defendant included associating himself with a local

Texas law firm for the purpose of representing his client, having his name appear on pleadings, and making two trips

to Dallas for the purpose of participating in settlement discussions, mediation, discovery, and arguing a discovery

motion), Steinhilber v. Lamoree, 825 F. Supp. 1003, 1006 (S.D. Fla. 1992) (declining to exercise personal

jurisdiction over non-resident lawyers who attended, at the direction of a Missouri court, a settlement conference in

Florida, where the plaintiff resided), and Weiss v. Greenburg, Traurig, Askew, Hoffman, Lipoff, Quentel & Wolff,

P.A., 446 N.Y.S.2d 447, 448-49 (N.Y. App. Div. 1981) (refusing to exercise personal jurisdiction over a Florida law

firm sued by the plaintiff, a New York resident, based on a Florida foreclosure action because knowledge that the

plaintiff was a New York resident and travel by the firm’s employees to New York to conduct or attend depositions

related to the Florida litigation were not sufficient alone to establish personal jurisdiction).

46

[p]laintiffs’ allegations,” Delphi Defs.’ Mem. at 13, and argue that this single visit does not

constitute minimum contacts. Their position lacks merit for several reasons. First, the Delphi

Defendants have admitted attending several meetings in the District of Columbia to discuss the

status of the Lans patents, Pls.’ Delphi Opp’n at 4-5, or the ‘986 Patent litigation, Compl. ¶ 60.

See Delphi Defs.’ Mem., Utterström Decl. ¶¶ 11-15; id., Lindström Decl. ¶¶ 12-14.

Furthermore, even if the July 1997 meeting was Delphi’s only contact with the District, this

contact alone is sufficient to constitute minimum contacts. See Richter v. Analex Corp., 940 F.

Supp. 353, 360 (D.D.C. 1996) (holding that personal jurisdiction existed over a nonresident

where the evidence suggested that the defendant gave advice regarding the bonuses at issue in

the case during a meeting in the District, even though the defendant disputed the allegation,

because the Court had to resolve factual disputes in favor of the plaintiff in assessing that it had

jurisdiction); Law Offices of Jerris Leonard, P.C. v. Mideast Sys., Ltd., 630 F. Supp. 1311, 1313

(D.D.C. 1986) (holding that the defendants’ several trips to the District to consult with their

attorneys (the plaintiffs) regarding the defendants’ case, coupled with the fact that “much of the

legal work [performed by the plaintiffs] was performed in the District,” constituted substantial

contact with the District); see also Freiman v. Lazur, 925 F. Supp. 14, 25-26 (D.D.C. 1996)

(stating that while a single meeting in the District may be sufficient to satisfy minimum contacts,

in that case, the single meeting in the District was neither “qualitatively significant” nor

significant “in the scheme of the parties’ dealings,” as all of the contracts at issue were executed

and performed outside of the District); Mitchell Energy Corp. v. Mary Helen Coal Co., 524 F.

Supp. 558, 563-64 (D.D.C. 1981) (maintaining that a single meeting in the District may be

sufficient to constitute “transacting business,” but holding that under the particular circumstances

of the case, the single meeting in the District in which the parties negotiated terms of a contract

47

was insignificant in the scheme of the parties’ dealings because the final contract signed by the

parties in Indianapolis differed substantially from the negotiated terms, and, therefore, the

defendant’s contacts were not sufficient to support jurisdiction under the long-arm statute or the

Due Process Clause).

The Delphi Defendants attempt to distinguish Richter, noting that the Court there “felt

obliged to resolve disputes of fact in the record in the plaintiff’s favor” because discovery had

not yet occurred, Delphi Defs.’ Mem. at 14 (citing Richter, 940 F. Supp. at 360), and on the

contention that there is no factual dispute in this case as to whether the decision to file suit in this

Court in Dr. Lans’s name only was made at the July 1997 meeting in the District. Id. These

arguments fail for two reasons. First, whether discovery has occurred is irrelevant to the Court’s

obligation in deciding a motion to dismiss to construe the facts alleged in the complaint in favor

of the plaintiff unless such assertions are “directly contradicted by affidavit . . . or other

evidence.” Rong v. Liaoning Provincial Gov’t, 362 F. Supp. 2d 83, 90 (D.D.C. 2005) (internal

quotation marks and citation omitted); see, e.g., Richter, 940 F. Supp. at 360 (implying that the

court had to resolve the factual dispute in favor of the plaintiff because “at [that] stage of the

litigation” – before the completion of discovery – there was no evidence contradicting the

plaintiff’s factual assertion, other than the defendant’s denial, and there was some evidence that

partially supported the plaintiff’s allegation). Second, the evidence cited by the defendants as

allegedly demonstrating that the decision to file suit was not made at that July 1997 meeting

actually supports the fact that there is a factual dispute which must be resolved in favor of the

plaintiffs.

There is both evidence contradicting the plaintiffs’ factual assertions that a decision to

file suit in Dr. Lans’s name occurred at the July 1997 meeting and that Delphi participated in that

48

decision, and evidence supporting Dr. Lans’s allegations. Compare Delphi Defs.’ Mem.,

Utterström Decl. ¶ 14 (claiming that the purpose of the meeting was to receive updates on the

status of patent licensing efforts in the United States, as well as in Germany and Italy), id.,

Lindström Decl. ¶ 12 (same but only as to Germany and Italy), id., Utterström Decl. ¶¶ 14-15

(confirming that there was a discussion regarding the potential transfer of ownership of the

patent, but claiming that no decision on this issue was made at the meeting, and the decision to

file suit in the United States, as well as in whose name to file, was not made at that meeting), id.,

Lindström Decl. ¶ 15 (same), and Mot. for Recons., Lans Decl. ¶ 14, Gateway, Civil Action No.

97-2523 (JGP), Civil Action No. 97-2526 (JGP), Civil Action No. 99-3153 (JGP) (indicating that

“[AMS] decided who the named plaintiff should be”), with Compl. ¶ 60 (alleging that a topic of

discussion at the meeting was whether the suit should be brought in Dr. Lans’s name or in the

name of Uniboard, and that the Delphi Defendants participated in the discussion), Delphi Defs.’

Mem., Utterström Decl. ¶ 15 (admitting that the possibility of litigation may have been discussed

at the meeting), and Pls.’ Delphi Opp’n, Ex. A, Tab 12 (Mastriani Deposition) at 152:4-21

(Mastriani’s statement that a discussion about who to name as plaintiff in the various

jurisdictions took place at the meeting). Based on the available evidence, the Court can only

conclude that there is a factual dispute concerning what was discussed and decided at the July

1997 meeting. If the Court assumes that the Delphi Defendants took part in the critical decision

to file the suit in Dr. Lans’s name only at the July 1997 meeting, then the Delphi Defendants’

“single visit” to the District of Columbia would contribute sufficient minimum contacts under

Richter. Also, even if the ultimate decision to file suit in Dr. Lans’s name only did not occur at

this meeting, but Delphi’s contribution to the discussion at the meeting was significant “in the

scheme of the parties’ dealings,” Mitchell Energy, 524 F. Supp. at 564, such that the discussion

49

led directly to the ultimate decision, then their participation in the discussion would support this

Court exercising personal jurisdiction over Delphi. See id. at 563-64 (recognizing that a single

negotiation session in the District upon which a contract at issue is based may be sufficient to

constitute “transacting business” in the District, but holding that under the particular

circumstances of the case, the single negotiation session was “insignificant in the scheme of the

parties’ dealings” because the final contract signed by the parties in Indianapolis differed

substantially from the negotiated terms). Therefore, the Court finds the Delphi Defendants’

“single visit” to the District of Columbia to constitute sufficient contacts with this forum to

satisfy the Due Process Clause.

Moreover, the Delphi Defendants contracted with a District of Columbia law firm to

assist with the representation of Dr. Lans and Uniboard.

While negotiating or performing business contracts has qualified as

‘transacting business’ for purposes of § 13-423(a)(1), entering into

a contract with an out-of-state party does not by itself . . . establish

minimum contacts or constitute purposeful availment. There must

be a ‘substantial connection’ between the contract and the forum,

which often exists where the contract is to be performed, in whole

or in part, in D.C.

Exponential Biotherapies, 638 F. Supp. 2d at 7 (internal citations omitted). The court must look

to the “prior negotiations and contemplated future consequences, along with the terms of the

contract and the parties’ actual course of dealing” to determine whether Delphi “purposely

established minimum contacts” with the forum. Burger King, 471 U.S. at 479; see Creighton

Ltd. v. Gov't of Qatar, 181 F.3d 118, 127-28 (D.C. Cir. 1999) (holding that the defendant did not

have minimum contacts with Tennessee or the United States solely by contracting with a United

States company because consideration of the prior negotiations, the contemplated future

consequences, the terms of the contract, and the parties course of dealing demonstrated that the

50

contract was offered, accepted, and performed in Qatar, the contract was made subject to the

laws of Qatar, and the alleged breach occurred in Qatar).

Here, the Fee Agreement was negotiated and executed in Sweden. Delphi Defs.’ Mem.,

Utterström Decl. ¶ 16. Therefore, the parties’ “prior negotiations” do not support the exercise of

jurisdiction over Delphi. However, the “contemplated future consequences” of the contract and

the parties’ “actual course of dealing” support a finding of personal jurisdiction in this forum.

By contracting with a District of Columbia law firm, Delphi had to appreciate that the work

performed by the District firm would be performed in this forum. See Law Offices of Jerris

Leonard, 630 F. Supp. at 1313 (holding that defendants, New York clients of a District of

Columbia law firm, “reasonably could have expected . . . that much of the legal work would have

been performed in the District of Columbia” by seeking legal counsel from a District firm with

expertise in government contracts law); Chase v. Pan-Pacific Broad., Inc., 617 F. Supp. 1414,

1422 (D.D.C. 1985) (initiation of business relationship with District of Columbia attorney

considered a contact indicating purposeful availment). Furthermore, the parties knew that the

patent would not expire for at least two-and-a-half years after they entered into the agreement,

Compl. ¶ 39 (indicating Mastriani’s belief that the patent would expire in December 1998); Pls.’

Delphi Opp’n, Ex. A, Tab 2 (Memo from Utterström, dated Dec. 10, 1995, indicating expiration

of all Dr. Lans’s color graphics patents between 2000 and 2002); id., Tab 6 (Fee Agreement)

(dated July 23, 1996), and therefore entered into a long-term agreement with a District of

Columbia law firm whereby AMS, in consultation with Delphi, would identify potential

infringers in the United States, Pls.’ Delphi Opp’n, Ex. A, Tab 6 (Fee Agreement) at 2, determine

the strategy for obtaining licenses from these infringers, id.; Compl. ¶ 43, and potentially initiate

legal action on behalf of the plaintiffs, Pls.’ Delphi Opp’n, Ex. A, Tab 6 (Fee Agreement) at 2.

51

The work was then actually performed in the District, and formed the basis for the plaintiffs’

claims. Having established such a long-term relationship, Delphi should have anticipated being

haled into court here. See Trinity Indus., Inc. v. Myers & Assocs., Ltd., 41 F.3d 229, 231 (5th

Cir. 1995) (holding that the existence of a long-term attorney-client relationship, in which the

attorney regularly handled matters for the client, along with representation requiring regular mail

and telephone communications with the forum, and occasional physical meetings in the forum,

supported an inference that the defendants purposefully availed themselves of the privilege of

doing business in the forum).

The Delphi Defendants argue that they did not contemplate representing the plaintiffs in

any litigation because AMS had exclusive control over litigation, but a fair reading of the Fee

Agreement only indicates that Delphi had no control over the decision to initiate litigation. Pls.’

Delphi Opp’n, Ex. A, Tab 6 (Fee Agreement) at 2-3. It indicates nothing concerning Delphi’s

authority to make decisions or have input regarding any litigation after it has been initiated. See

id. at 1-3. Despite the fact that the Fee Agreement does not address Delphi’s role following the

initiation of litigation, litigation in the United States was actually pursued, and the Delphi

Defendants actually assisted with that U.S. litigation by submitting declarations in support of

discovery motions, translating, drafting, reviewing and commenting on interrogatory responses,

preparing affidavits filed in this Court, and reviewing the complaint. Delphi Defs.’ Mem.,

Utterström Decl. ¶¶ 10, 16; id., Lindström Decl. ¶¶ 16-17; Pls.’ Delphi Opp’n, Ex. A, Tab 11

(Evidentiary Hearing Transcript) at 90:19-92:11. Finally, once litigation was initiated in the

District under Dr. Lans’s name, and Delphi participated in that litigation, it clearly availed itself

of the privilege of doing business in this forum as a result of the decision to pursue litigation in

this jurisdiction. See Mitrano v. Hawes, 377 F.3d 402, 407 (4th Cir. 2004) (“[E]ven assuming

52

[the defendant] was not involved in the initial selection of the forum, . . . [the defendant] knew

that the suit had been filed there. . . . Thus, [the defendant’s] knowing continuation of the suit in

[the forum] demonstrates that his availment of [the forum’s] legal protections was purposeful.”

(citing Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42, 55 (1st Cir.

2002))); see also Chase, 617 F. Supp. at 1424 (“[R]atification may be implied from any act,

words, or course of conduct on the part of the principal which reasonably tends to show an

intention on his part to ratify the unauthorized acts or transactions of the alleged agent.” (quoting

3 Am. Jur. 2d Agency § 161 (1963))); 3 Am. Jur. 2d Agency § 193 (2002) (“[R]atification may

be inferred by a principal’s acquiescence in the results of an unauthorized act of an agent, and, in

this regard, it has also been said that ratification may be found to exist by implication from a

principal's failure to dissent within a reasonable time after learning what has been done . . . .”

(footnotes omitted)).

In sum, Delphi deliberately reached out beyond Sweden and voluntarily negotiated and

entered into a contract with a District of Columbia law firm, on behalf of their Swedish client, in

order to obtain the benefits of associating with a District law firm in connection with Dr. Lans

receiving legal representation in the United States. Further, Delphi engaged in a transaction

(contracting with the AMS Defendants to assist in representing the plaintiffs in the United States)

which had a substantial connection with the District and which Delphi must have known would

have consequences here. In so doing, Delphi invoked the benefits and protections of the

District’s laws. Hanson v. Denckla, 357 U.S. 235, 253 (1958); see also, e.g., Chase, 617 F.

Supp. at 1422 (holding that initiation of a business relationship with a District of Columbia

attorney, making business decisions related to the legal matters, and taking part in telephone

conversations, correspondence, and two meetings in the District of Columbia to discuss the legal

53

matters with the District attorney demonstrated that the defendant “‘purposefully directed his

activities at residents’ of the District of Columbia”).

For the foregoing reasons, the Court concludes that the plaintiffs have stated sufficient

facts to establish personal jurisdiction over Delphi. 24

b. Defendants Utterström’s and Lindström’s Fiduciary Shield Defense

Defendants Lindström and Utterström, relying on the fiduciary shield doctrine, 25 argue

that not only must personal jurisdiction be established as to each defendant individually, but

personal jurisdiction over them as “employees, officers, or agents sued in their individual

capacities must be based on their personal contacts with the forum and not on activities carried

out” within the scope of employment. Delphi Defs.’ Mem. at 9 (emphasis added); see also

Delphi Defs.’ Reply at 5-7. The plaintiffs counter that the fiduciary shield doctrine does not

apply in the context of a legal malpractice case, and that an individual attorney’s contacts with

the forum, even in his capacity as an employee, officer, or agent of a law firm, are sufficient to

establish personal jurisdiction over the individual attorney as well as the law firm. Pls.’ Delphi

Opp’n at 6 n.10.

Notably, the defendants failed to acknowledge the exception to the fiduciary shield

doctrine – that the doctrine is “inapplicable when the defendant is found to be ‘more than an

employee’ of the corporation.” Nat’l Cmty. Reinvestment Coal. v. Novastar Fin., Inc., 631 F.

24

The plaintiffs also argue that even if the Delphi Defendants contacts were insufficient for personal jurisdiction, all

contacts made by AMS with the District of Columbia are attributable to Delphi because they acted as partners, or at

least co-counsel. Pls.’ Delphi Opp’n at 11. Because the Court has determined that Delphi’s contacts were sufficient

to establish personal jurisdiction, the Court finds it unnecessary to address these arguments.

25

The fiduciary shield doctrine requires that “personal jurisdiction over the employees or officers of a corporation

in their individual capacities . . . be based on their personal contacts with the forum and not their acts and contacts

carried out solely in a corporate capacity.” Nat’l Cmty. Reinvestment Coal. v. Novastar Fin., Inc., 631 F. Supp. 2d 1,

5 (D.D.C. 2009) (quoting Wiggins v. Equifax, 853 F. Supp. 500, 503 (D.D.C. 1994)). “The plaintiff therefore must

demonstrate that the individual defendants are subject to personal jurisdiction ‘apart from any jurisdiction that might

exist over their corporate-entity employers.’” Id. (quoting D’Onofrio v. SFX Sports Grp., Inc., 534 F. Supp. 2d 86,

90-91 (D.D.C. 2008)).

54

Supp. 2d 1, 5 (D.D.C. 2009); see, e.g., Covington & Burling v. Int’l Mktg. & Research, Inc., No.

Civ.A. XX-XXXXXXX, 2003 WL 21384825, at *6 (D.C. Super. Ct. Apr. 17, 2003) (concluding that,

where the two officer defendants were the “only corporate officers [of the corporation] and set

company policies and procedures,” were “active in day-to-day operations of the company,” and

had direct “involvement and supervision of all aspects of the company,” the corporate officers

were “more than mere employees” and, therefore, “not insulated from [the C]ourt’s

jurisdiction”). But see Kopff v. Battaglia, 425 F. Supp. 2d 76, 85 (D.D.C. 2006) (recognizing

Covington, but determining that the exception did not apply in that case because the chief

programmer of a blast-fax advertising firm, although an officer, did not have “any role in

directing or controlling company policy”). 26 In any case, there is no indication that the fiduciary

shield doctrine applies in the non-corporation context, as it has not been applied to law firm

attorneys in legal malpractice cases or to partnerships. 27 See, e.g., Jacobsen, 201 F. Supp. 2d at

107 & n.11 (basing personal jurisdiction over partner of professional corporation law firm on

contacts made within the scope of employment, i.e., legal advice that was the basis for the

26

Other members of this Court have also held that because the “transacting business” provision of the long-arm

statute extends to the full limits of the Due Process Clause, and the doctrine “confuses procedural and substantive

questions and unreasonably immunizes from jurisdiction one who in fact acted in the forum state,” the fiduciary

shield is inapplicable to section 13-423(a)(1). Chase, 617 F. Supp. at 1423; see also Am. Directory Serv. Agency,

Inc. v. Beam, 131 F.R.D. 15, 17 (D.D.C. 1990) (agreeing with Chase and finding that the fiduciary shield doctrine

goes to the merits of the case, not the ability of the court to adjudicate the case); Katradis v. Dav-el of Washington,

D.C., 702 F. Supp. 1, 1 (D.D.C. 1987) (citing Chase for the proposition that an individual may be “transacting

business” in the District of Columbia under D.C. Code § 13-423(a)(1) even if acting solely in a fiduciary capacity

for a corporation).

27

Even if the fiduciary shield doctrine applied to law firms, Mr. Utterström would not be insulated from the Court’s

jurisdiction under the exception because he was the managing partner of Delphi, and in this capacity would

inevitably have had a major role in all aspects of the firm’s operations, including directing or controlling company

policy, making him more than a mere employee. Lindström, on the other hand, might be insulated from the Court’s

jurisdiction based on contacts within the scope of his employment because his position at Delphi was as “of

counsel” and he therefore presumably had little or no control over company policy. However, application of the

fiduciary shield doctrine is not mandatory, and is within the sound discretion of the Court. Bailey v. J & B Trucking

Servs., Inc., 577 F. Supp. 2d 116, 119 (D.D.C. 2008). Because the Court determines that the fiduciary shield

doctrine does not apply in this case, it is unnecessary for the Court to determine whether Lindström would have been

insulated from its jurisdiction under the doctrine.

55

plaintiffs’ malpractice suit); Richter, 940 F. Supp. at 359-60 (finding personal jurisdiction over

managing partner of accounting firm who was present at meeting where negligent advice was

allegedly provided, without considering the applicability of the fiduciary shield doctrine).

Therefore, the plaintiffs must establish personal jurisdiction over Utterström and Lindström

based on each defendant’s independent contacts with the forum, but these contacts may be

contacts committed within the scope of their employment.

Utterström is a citizen and resident of Sweden, has never lived, worked, rented or owned

property in the District of Columbia, and has no other assets in the United States. Delphi Defs.’

Mem., Utterström Decl. ¶¶ 2, 4, 6. He has also made no appearances in any patent infringement

cases in the United States. Id., Utterström Decl. ¶ 9. Utterström was, however, the managing

partner of Delphi during the time period relevant to this litigation. Id., Utterström Decl. ¶ 3.

During that period of time, Utterström sent several communications to AMS in the District

related to Dr. Lans’s representation. See Pls.’ Delphi Opp’n Ex. A, Tab 2, 6 (Memorandum and

Letter); Compl. ¶¶ 57-59. 28 He also visited the District on four occasions related to the

representation, including three visits with AMS to receive updates on the status of the Lans

patent matters, Delphi Defs.’ Mem., Utterström Decl. ¶ 11, a meeting with Compaq at AMS’s

office, id., Utterström Decl. ¶ 12, and the July 1997 meeting where a topic of discussion was

whether the suit should be brought in Dr. Lans’s name or in the name of Uniboard, id.,

Utterström Decl. ¶ 14. Finally, Utterström assisted with the District of Columbia litigation by

reviewing and commenting on interrogatory responses, and preparing affidavits filed in this

Court. Id., Utterström Decl. ¶¶ 10, 16.

28

These communications consisted of the December 10, 1995, memorandum to AMS regarding the ‘986 patent,

Pls.’ Delphi Opp’n Ex. A, Tab 2, the April 17, 1997, communication to Mastriani confirming that all licensing fees

for the patent were to be paid to Uniboard, Compl. ¶ 57, the August 7, 1997, letter to Mastriani regarding the

taxation of the licensing fees, id. ¶ 58, and the August 8, 1997, letter to Mastriani regarding a taxation issue, id. ¶ 59.

56

Lindström, on the other hand, is a United States citizen, id., Lindström Decl. ¶ 2, and was

an inactive member of the District of Columbia Bar prior to moving to Sweden, id., Lindström

Decl. ¶ 8. He is, however, a resident of Sweden, id., Lindström Decl. ¶ 3, and has no assets in

the District of Columbia, id., Lindström Decl. ¶ 9. He also made no appearance in any patent

infringement cases filed on behalf of Dr. Lans in the United States, id., Lindström Decl. ¶ 11,

and was employed as “of counsel” at Delphi during the relevant time period, id., Lindström Decl.

¶ 5. Lindström is, nevertheless, responsible for having initiated contact with AMS regarding the

pursuit of patent infringers in the United States on Dr. Lans’s behalf. Compl. ¶¶ 32-33. During

that representation, Lindström made two visits to the District of Columbia to meet with AMS

regarding the representation, including the July 1997 meeting. Delphi Defs.’ Mem., Lindström

Decl. ¶ 12. Finally, Lindström assisted with litigation by submitting declarations, translating,

reviewing and commenting on interrogatory responses, and preparing affidavits filed in this

Court. Id., Lindström Decl. ¶¶ 16-17.

For reasons similar to those discussed previously as to Delphi, the Court finds that

Utterström transacted business in the District of Columbia under the long-arm statute, and had

sufficient contacts purposefully directed at the District to satisfy due process. While his

communications and litigation-related activities alone would be insufficient to confer personal

jurisdiction over him, Utterström’s four visits to the District of Columbia related to the

representation of the plaintiffs, including his participation in the July 1997 meeting when alleged

malpractice was committed, and contracting with a District of Columbia law firm to assist with

the representation, are sufficient to qualify as minimum contacts. See Chase, 617 F. Supp. at

1422 (holding that initiation of a business relationship with a District of Columbia attorney,

agreeing to fee agreement with the attorney, making business decisions related to the legal

57

matters, communications into the District through telephone conversations and written

correspondence, and attending two meetings in the District to discuss the legal matters with the

District attorney established that defendant “purposefully directed his activities at residents of the

District of Columbia” (internal quotation marks omitted)). Even though Utterström did not

initiate contact with AMS, when he signed the agreement to represent Dr. Lans in the United

States and consulted with a District of Columbia law firm concerning that representation, he

reasonably could have expected that much of the work would be performed in the District.

Moreover, the agreement to seek licenses from patent infringers throughout the duration of the

patent – a patent Utterström knew would not expire for at least two-and-a-half years after he

entered into the agreement, Pls.’ Delphi Opp’n, Ex. A, Tab 2 (Memo from Utterström indicating

expiration of all Dr. Lans’s color graphics patents between 2000 and 2002) – created a long-term

relationship with a District of Columbia law firm. Utterström expected to gain the pecuniary

benefits of being able to represent Dr. Lans against United States infringers, through the

involvement of local counsel, by collecting a percentage of all licensing fees obtained in the

United States matters, whether through negotiation or litigation. Id., Ex. A, Tab 6 (Fee

Agreement) at 3. Therefore, once litigation was initiated – an action not outside the

contemplation of the parties – Utterström’s knowing continuation of the suit in the District

demonstrated his purposeful availment of the benefits and protections of the laws of this forum,

Mitrano v. Hawes, 377 F.3d 402, 407 (4th Cir. 2004), and he therefore should have anticipated

being haled into court here.

The case for jurisdiction over Lindström is even more compelling. Not only did

Lindström make two visits to the District of Columbia related to the representation, including

participation in the July 1997 meeting when alleged malpractice took place, and enter into a

58

long-term relationship with a District of Columbia law firm to assist with the plainitffs’

representation by signing the Fee Agreement, but he is also responsible for initially approaching

AMS regarding Dr. Lans’s United States-based pursuits. Compl. ¶¶ 32-33. Therefore, for the

same reasons stated above, the exercise of personal jurisdiction over Lindström is proper. 29

c. Reasonableness

Once a court has determined that a defendant has purposefully directed its activities at

residents of a forum, the burden shifts to the defendant “to present a compelling case that the

presence of some other considerations would render jurisdiction unreasonable.” Jacobsen, 201

F. Supp. 2d at 107-08 (quoting Burger King, 471 U.S. at 477) (internal quotation marks omitted).

In assessing whether the assertion of jurisdiction is reasonable, the court must consider “the

burden on the defendant, the interests of the forum State, . . . the plaintiff’s interest in obtaining

relief . . . the interstate judicial system’s interest in obtaining efficient resolution of

controversies[,] and the shared interest of the several States in furthering fundamental

substantive social policies.” Asahi, 480 U.S. at 113 (quoting World-Wide Volkswagen, 444 U.S.

at 292) (internal quotation marks omitted).

29

There is some discussion in the briefs concerning the impact of Lindström’s membership in the District of

Columbia Bar. Because personal jurisdiction over Lindström is held to be proper without evaluation of this factor,

the Court need not address it. However, the Court notes that it has been widely held that membership in a state Bar

does not have any impact on the jurisdictional analysis. Santos v. Sacks, 697 F. Supp. 275, 281 (E.D. La. 1988) (“It

is this Court’s opinion that membership in the [state] Bar does not, of itself, establish the minimum contacts required

by due process to confer personal jurisdiction over a nonresident defendant.”); see Dove v. United States, No. 86-cv-

65, 1987 WL 18739, at *1-*4 (D.D.C. Oct. 9, 1987) (District of Columbia Bar membership had no impact on

whether court could exercise personal jurisdiction over two Virginia attorneys who performed legal services that had

a subsequent impact in the District; jurisdiction therefore found lacking despite their Bar membership); Ghanem v.

Kay, D.P.M., 624 F. Supp. 23, 24-25 & n.6 (D.D.C. 1984) (finding persuasive the holding in Lebkuecher v.

Loquasto, 389 A.2d 143, 145 (Pa. Super. 1978), that “it is the actual practice of a profession . . . and not the

possession of the right to practice that brings a person within the jurisdiction of a . . . court” and thus holding that

“where the physician has not aggressively sought patients in the forum and the plaintiff did not consult defendant as

a result of forum activities by the defendant[], possession of a license . . . without practicing in the forum is not

sufficient to meet the due process requirements” of long-arm jurisdiction); see also Worthington v. Small, 46 F.

Supp. 2d 1126, 1127-30 (D. Kan. 1999) (finding no personal jurisdiction, despite the defendant attorney’s license to

practice law in Kansas, because his legal practice was centered in Missouri, the attorney did not solicit plaintiff’s

business in Kansas, and the contract at issue did not contemplate the performance of any services in Kansas).

59

The Delphi Defendants contend that even if there are sufficient minimum contacts with

the District of Columbia, it would be unreasonable to assert jurisdiction over them for several

reasons: (1) the burden on the defendants of having to appear in a suit in a foreign country would

be significant, especially since they have no office or facilities in the United States, Delphi Defs.’

Mem. at 17; (2) the District’s interest in adjudicating the dispute is “minimal” because neither of

the plaintiffs nor any of the Delphi Defendants is a resident of the District, id. at 17-18; (3) the

plaintiffs’ interest in obtaining convenient relief should be given little weight where the plaintiffs

have not chosen their home forum and there is no indication that bringing suit in Sweden would

subject the plaintiffs to “unreasonable inconvenience,” id. at 18-19; (4) “any judgment rendered

against the Delphi Defendants by this Court will not [be] enforceable in Sweden,” and therefore

permitting litigation to continue in the District of Columbia would be an inefficient use of

judicial resources, id. at 19; and (5) whereas the District of Columbia has little interest in

ensuring that the plaintiffs’ claims are litigated here, “Sweden’s interest in developing and

enforcing the standards governing the provision of legal services by Swedish lawyers, in

Sweden, to Swedish nationals, is undeniable,” id. at 19-20.

In response, the plaintiffs assert that any burden imposed on the defendants is outweighed

by their contacts with the forum because of the frequency with which the individual defendants

visited the District of Columbia, Lindström’s status as a former resident of McLean, Virginia,

and his status as an inactive member of the District of Columbia Bar. Pls.’ Delphi Opp’n at 16-

17. Further, the plaintiffs contend that the District of Columbia has a substantial interest in

regulating the conduct of attorneys who practice within its borders. Id. at 18. While the

plaintiffs admit that the Delphi Defendants did not appear before the Court, the plaintiffs

nevertheless claim that the defendants did participate in the infringement proceedings through

60

the drafting of affidavits and discovery responses and by giving advice regarding litigation and

negotiation strategy. Id. The plaintiffs claim that their interest in having their claims against the

Delphi Defendants heard in the District of Columbia is strong because their choice of forum

should be given deference, they likely would be unable to litigate their claims against AMS in

Sweden, and forcing the plaintiffs to litigate this matter against AMS in the District and against

the Delphi Defendants in Sweden “creates the possibility that parallel and contradictory

judgments will be rendered.” Id. The plaintiffs also contend that any effort to litigate this matter

in a Swedish court would be a “duplicative, inefficient use of resources” because the Swedish

court “would have to re-create the events which have transpired in this Court over many years,”

and damages calculations in this case require the application of United States patent law, which

United States courts can “more efficiently” decide. Id. at 19. Lastly, the plaintiffs argue that

public policy should “discourage attorneys from actively participating in, and earning substantial

revenue from, litigation before it, but then denying the Court’s authority to exercise jurisdiction

over those attorneys.” Id. The Court finds that the Delphi Defendants have not presented a

compelling case that this Court’s exercise of jurisdiction in this matter would be unreasonable.

In evaluating the burden on the Delphi Defendants, the Court is mindful of the Supreme

Court’s admonition that “[t]he unique burdens placed upon one who must defend oneself in a

foreign legal system should have significant weight in assessing the reasonableness of stretching

the long arm of personal jurisdiction over national borders.” Asahi, 480 U.S. at 114. The burden

on the defendants in this case is therefore significant. As the Delphi Defendants point out, they

have no offices or facilities in the District of Columbia or anywhere in the United States. Delphi

Defs.’ Mem., Utterström ¶ 3. Nor do they have any assets in the United States or own or rent

any real or personal property in the District of Columbia. Id., Utterstrom Decl. ¶ 3. Not only

61

must the Delphi Defendants travel the great distance between Sweden and the District of

Columbia, but they also must defend themselves in a foreign nation’s judicial system. Although

the plaintiffs argue that the frequency with which Lindström and Utterström visited the District

of Columbia indicates that there would not be a significant burden on the defendants, 14 visits

over 10 years is hardly significant. Id., Utterström Decl. ¶¶ 11-14; id., Lindström Decl. ¶¶ 12-14,

18.

Next, the Court must consider the interests of the District of Columbia in adjudicating the

dispute. Where minimum contacts have been established, the serious burdens placed on an alien

defendant are often justified by the interests of the plaintiff and the forum. See Asahi, 480 U.S.

at 114 (“[O]ften the interests of the plaintiff and the forum in the exercise of jurisdiction will

justify even the serious burdens placed on the alien defendant.”). Because the plaintiffs are not

District of Columbia residents, the District’s interest in the dispute is considerably diminished.

See id. The District’s interest is not, however, completely eliminated in such circumstances. For

example, the District of Columbia has an interest in “regulating the conduct of attorneys who

practice within its borders.” Jacobsen, 201 F. Supp. 2d at 99-100. The claims in this case center

on alleged malpractice, assorted torts, breaches of various fiduciary duties, and breaches of

contract, all which relate to litigation pursued in the District of Columbia and legal

representation by attorneys in general. Even though none of the Delphi Defendants ever entered

an appearance in Dr. Lans’s cases filed in this Court, Delphi Defs.’ Mem., Utterström Decl. ¶ 9;

id., Lindström Decl. ¶ 11, the District would have a significant interest in the conduct of the

Delphi Defendants if they participated in the infringement litigation-related activities, through

their drafting of affidavits and discovery responses, and their submission of declarations, and

their participation in strategy discussions, including, possibly the decision to file the first suit in

62

Dr. Lans’s name only. Construing these disputed facts in favor of the plaintiffs, the Court

concludes that the District of Columbia has a significant interest in exercising jurisdiction over

the Delphi Defendants. Cf. Asahi, 480 U.S. at 114-15 (holding that the interests of the forum

were slight where (1) the only remaining claim had no connection to the forum, (2) the plaintiff

was not a resident of the forum, (3) the plaintiff had not demonstrated that it was more

convenient for it to litigate its claim against the alien defendant in California rather than Taiwan,

the plaintiff’s home forum, and (4) while California did have an interest in “protecting its

consumers by ensuring that foreign manufacturers comply with the state’s safety standards,” the

dispute was not primarily about safety standards, but rather indemnification).

The defendants also argue that the plaintiffs’ interest should be given little weight

because the plaintiffs have not chosen their home forum and there is no indication that bringing

suit in Sweden would subject the plaintiffs to “unreasonable inconvenience,” Delphi Defs.’

Mem. at 18. Defendants cite to Camelback Ski Corp. v. Behning, 539 A.2d 1107 (Md. 1988),

where the Court of Appeals of Maryland determined it did not have personal jurisdiction over a

Pennsylvania defendant in a suit brought by a Maryland plaintiff where the plaintiff could have

maintained the action in Pennsylvania “without suffering unreasonable inconvenience.”

Camelback Ski Corp., 539 A.2d at 1113. While this was indeed a factor considered by

Maryland’s highest court in its fairness analysis, the court’s conclusion was that the fairness

factors “would operate slightly in favor of the claim that Maryland should exercise jurisdiction,”

not that the court lacked jurisdiction based on these factors. Id. The Court noted that the

exercise of jurisdiction in Maryland would have been proper had the plaintiff in that case

established sufficient “minimum contacts” between the defendant and Maryland. Id. Therefore,

the fact that the plaintiffs in this case could have brought suit in Sweden without “unreasonable

63

inconvenience” has minimal significance. On the other hand, the “possibility that parallel and

contradictory judgments will be rendered,” Pls.’ Delphi Opp’n at 18-19, as a result of the

plaintiffs’ litigating this matter against AMS in the District and against Delphi in Sweden is a

legitimate concern, and therefore has considerable weight. As such, this factor operates in favor

of jurisdiction being exercised by this Court.

As to the “efficient resolution of controversies” consideration, the Court is mindful that

any judgment rendered against the Delphi Defendants in this Court may be unenforceable against

them in Sweden because Swedish courts do not recognize United States judgments and the

defendants currently have no assets in the United States. See Eaton Corp. v. Maslym Holding

Co., 929 F. Supp. 792, 799 (D.N.J. 1996) (noting the “utter inefficiency” that would result from

adjudicating a controversy in which any judgment rendered by a United States court “would not

be recognized nor enforceable” in the defendants’ home country, and that “[t]here simply cannot

be a less efficient use of judicial resources” than “spend[ing] countless hours on an effort that

would have little or no meaningful effect on defendants in [their home country]”); see also

Delphi Defs.’ Mem. at 23-24. The life of a judgment, however, is extensive. During its

existence, the defendants may at some point attain assets in the United States against which the

plaintiffs can enforce any judgment it may obtain. Or, the Delphi Defendants may acquire assets

in a foreign country willing to recognize and enforce a United States judgment. While the

plaintiffs assume a risk by choosing to litigate here against the Delphi Defendants, the plaintiffs

appear to be willing to assume such risk. Therefore, this factor also weighs in favor of personal

jurisdiction being exercised in the District of Columbia.

Finally, consideration of the shared interests of the “several States” factor requires this

Court, in this case, to consider the “procedural and substantive policies of other nations whose

64

interests are affected by the assertion of jurisdiction” by a District of Columbia court – here,

Sweden. Asahi, 480 U.S. at 115. Sweden’s interests and foreign relations policy are best served

by “a careful inquiry into the reasonableness of the assertion of jurisdiction . . . , and an

unwillingness to find the serious burdens on an alien defendant outweighed by minimal interests

on the part of the plaintiff or the forum State.” Id. As previously noted, however, the District of

Columbia has a significant interest in regulating attorneys who engage in legal activity within its

borders, whether the attorneys are American or Swedish. Sweden’s interests, therefore, are

minimally impacted here, where the interests of the forum and of the plaintiff are significant.

On the record in this case the Court finds, on balance, that the reasonableness factors

weigh in favor of the Court exercising jurisdiction over all of the Delphi Defendants.

Accordingly, the Delphi Defendants’ motion to dismiss for lack of personal jurisdiction is

denied. 30

2. Forum non conveniens

The Delphi Defen

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